“In the age of the knowledge economy, the efficient and creative use of knowledge is a key determinant of international competitiveness, wealth creation and improved social welfare.” “An effective intellectual property (IP) system embedded within a national strategy which anchors IP considerations firmly within the policy-making process will help a nation to promote and protect its intellectual assets, thereby driving economic growth and wealth creation” Kamil Idris Former WIPO Director General

1. LAWPLUS 1
Think Positive:
International Intellectual Property System
Kowit Somwaiya
Managing Partner, LawPlus Ltd.
Director, The Intellectual Property Association of Thailand (IPAT)
Pullman Bangkok Hotel G, Silom
21st January 2016
www.lawplusltd.com

2. LAWPLUS 2
Intellectual Property: A Tool for Development
• “In the age of the knowledge economy, the efficient and creative use of
knowledge is a key determinant of international competitiveness, wealth
creation and improved social welfare.”
• “An effective intellectual property (IP) system embedded within a national
strategy which anchors IP considerations firmly within the policy-making
process will help a nation to promote and protect its intellectual assets,
thereby driving economic growth and wealth creation”
Kamil Idris
Former WIPO Director General

3. LAWPLUS 3
Intellectual Property: New Model
Source: http://www.wipo.int/edocs/mdocs/sme/en/wipo_unido_smes_msk_07/wipo_unido_smes_msk_07_www_73614.ppt

4. LAWPLUS 4
International IP System: Overall Positive Impact
Creation of IP
Registration of IP
• Facilitates and supports creation of IP
globally
• Gives incentive to create more IP assets
since cost-effectiveness is higher
• Creates global value chain.
• Simplifies the process.
• Save time and costs.
• Makes it easier to manage registrations
in many countries.

5. LAWPLUS 5
International IP System: Overall Positive Impact
Utilization of IP
Enforcement of IP
• Makes it easier to manage foreign IP
portfolios.
• Increases tradability of IP assets and the
development of markets.
• Helps protect and exploit IP assets in
multiple countries which ultimately helps
companies to recoup their investment.
• Provides centralized database of IPRs
and thus infringers can be identified and
prosecuted more readily.
• Helps putt the world on notice that your
legal rights and intellectual property are
being protected.

6. LAWPLUS 6
Source: http://www.jamesbranding.com/wp-content/uploads/2014/02/brands-of-the-world-fmcg-cpg.jpg

7. LAWPLUS 7
The World's Most Valuable Brands (Forbes 2015)
Rank Brand Brand Value 1-Yr Value
Change
Brand
Revenue
Company
Advertising
Industry
#1 Apple $145.3 B 17% $182.3 B $1.2 B Technology
#2 Microsoft $69.3 B 10% $93.3 B $2.3 B Technology
#3 Google $65.5 B 16% $61.8 B $3 B Technology
#4 Coca-Cola $56 B 0% $23.1 B $3.5 B Beverages
#5 IBM $49.8 B 4% $92.8 B $1.3 B Technology
#6 McDonald’s $39.5 B -1% $87.8 B $808 M Restaurant
#7 Samsung $37.9 B 8% $187.8 B $3.8 B Technology
#8 Toyota $37.8 B 21% $171.1 B $3.8 B Automotive
#9 General
Electronic
$37.5 B 1% $129.1 B - Diversified
#10 Facebook $36.5 B 54% $12.1 B $135 M Technology
http://www.forbes.com/powerful-brands/list/#tab:rank

8. LAWPLUS 8
The World's Most Valuable Brands (Forbes 2015)
Rank Brand Brand Value 1-Yr Value
Change
Brand
Revenue
Company
Advertising
Industry
#1 Apple $145.3 B 17% $182.3 B $1.2 B Technology
#2 Microsoft $69.3 B 10% $93.3 B $2.3 B Technology
#3 Google $65.5 B 16% $61.8 B $3 B Technology
#4 Coca-Cola $56 B 0% $23.1 B $3.5 B Beverages
#5 IBM $49.8 B 4% $92.8 B $1.3 B Technology
#6 McDonald’s $39.5 B -1% $87.8 B $808 M Restaurant
#7 Samsung $37.9 B 8% $187.8 B $3.8 B Technology
#8 Toyota $37.8 B 21% $171.1 B $3.8 B Automotive
#9 General
Electronic
$37.5 B 1% $129.1 B - Diversified
#10 Facebook $36.5 B 54% $12.1 B $135 M Technology
http://www.forbes.com/powerful-brands/list/#tab:rank

9. LAWPLUS 9
International IP System: Advantages of Madrid System
• Centralization and Simplified Management
– File one application, in one language, at one time to enjoy the benefits of
trademark protection in over 90 countries.
– Since this system is similar to a bundle of national registrations, managing
protection of marks will be simplified.
– Less paper work to be done.
– Simplifies and facilitates the subsequent management of your trademark
protection e.g. trademark assignments and registrant name changes.

10. LAWPLUS 10
International IP System: Advantages of Madrid System
• Flexibility
– Requests to extend protection beyond the initial member countries may be
made at any time and are effective when filed
• Cost Savings and Cost-Effectiveness
– The initial cost savings of the Madrid system stem from the central filing for
protection in multiple jurisdictions without the help of a representative in the
local country. Thus, there are no associate fees at the time of filing.
– If the application is not refused or opposed, the cost of foreign counsel could
be completely eliminated from the registration process.

11. LAWPLUS 11
International IP System: Advantages of Madrid System
• Speed / Time Savings
– The Madrid Protocol requires that review of the application, and rejection if
applicable, take place within 18 months after filing of the application.
– By providing simplified process, brings the possibility of time savings in
subsequent management of your trademark rights as well.
• Paris Convention Advantage
– Benefit from the advantages afforded by the Paris Convention in obtaining a
priority filing date.

12. LAWPLUS 12
International IP System: Advantages of Madrid System
• More Business Opportunities/ Expansion of Market
– By providing cheaper and simpler procedures, makes the possibility of
protecting trademarks in a large number of countries a reality for many
enterprises, especially SMEs.
• Offensive Advantage
– Because member countries will have a centralized database of trademarks,
infringers can be identified and prosecuted more readily.
– By simply registering your valuable mark within the database, your company
is putting the world on notice that your legal rights and intellectual property
are being protected.

13. LAWPLUS 13
International IP System: Probable Disadvantages of Madrid System
• Dependency and Vulnerability to Central Attack
 HOWEVER, IP owners can minimize risk associated with 5-year dependency
period by
 keeping your eyes closely on your base application
 marking all the deadlines
 being active in responding to any office action
 using well-established, registered marks as the basis for international
application
 for a new or unregistered trademark, an applicant should choose only a strong
mark that has little chance of facing meaningful opposition or encountering a
refusal

14. LAWPLUS 14
International IP System: Probable Disadvantages of Madrid System
• Single Specification of Goods/Services
 HOWEVER, this is not an unsolvable problem.
 The classification and specifications of goods/services are likely to be less
different and more harmonious.
 Nevertheless, if there is huge difference in goods/services in different countries,
you may consider using a combination of available filing options depending on
where you want protection and which foreign markets are most critical.

15. LAWPLUS 15
International IP System: Probable Disadvantages of Madrid System
• Limitation in Assignment to Non-Member Countries
 HOWEVER, this is expectable.
 Comparing this to traditional/national filing in every targeted country, filing one
international application under Madrid Protocol for protection in member
countries and filing only a few national applications in non-member countries (or
may be none if all targeted markets are already covered under international
application) brings you less workload than traditional/national filing in
every targeted country.

16. LAWPLUS 16
What Users Say about the Madrid System
Source: http://www.wipo.int/multimedia-video/en/madrid/nestle.ogg
"I encourage all companies to
use the Madrid System as
much as they can"
– Jean-Pierre Maeder, Group
Head of Trademarks, Nestlé,
Switzerland

17. LAWPLUS 17
What Users Say about the Madrid System
Source: http://www.wipo.int/multimedia-video/en/madrid/shiseido.ogg
"It is a great tool for our
business!"
– Ichiro Morikawa, Senior
Manager of Trademark
Group, Shiseido, Japan

18. LAWPLUS 18
What Users Say about the Madrid System
Source: http://www.wipo.int/multimedia-video/en/madrid/sony.ogg
"The most effective global
trademark system for the
borderless network era"
– Shinji Ina, General
Manager, IP Alliance &
Licensing, Sony, Japan

19. LAWPLUS 19
What Users Say about the Madrid System
Source: http://www.wipo.int/multimedia-video/en/madrid/microsoft.ogg
"The Madrid Protocol has
been wonderful for the US“
– Russell Pangborn, Associate
General Counsel, Trademarks,
Microsoft , USA

20. LAWPLUS 20
International IP System: Advantages of Hague System
• Centralization and Simplified Management
• Cost Savings and Cost-Effectiveness
• Time Savings
• More Business Opportunities/ Expansion of Market
(Same concept as Madrid System)

21. LAWPLUS 21
International IP System: Probable disadvantages of Hague System
• Differences in Drawing Standards
 HOWEVER, this is not detrimental.
 Although more than one set of drawings may be required, the number
of drawings set will never be more than when an applicant files for the
design protection separately in each targeted country.
 Overall, it brings you less workload than traditional/national filing route.
• Limitation in Assignment to Non-Member Countries
 HOWEVER, this is expectable.
 Nevertheless, it brings you less workload than traditional/national filing
route.

22. LAWPLUS 22
Other Interesting International/Regional IP Systems
• The Patent Cooperation Treaty (PCT)
• Community Trademark (CTM)
• Community Design (RCD)

23. LAWPLUS 23
Strategy Considerations
1. Identify the countries in which filing is desired and the
corresponding costs.
• There are many options of filing. You may
– (1) use international registration systems;
– (2) use national registration system;
– (3) use regional registration system; or
– (4) use a combination of above systems.
• For instance, (a) a CTM; (b) an international application for applicable
key market non-EU Madrid Protocol countries; and (c) national marks.

24. LAWPLUS 24
Strategy Considerations
2. Confirm existing or anticipated corporate structure:
• Will several related entities own your same marks/design/patent
worldwide?
• Will an offshore holding company hold your marks/design/patent rights?
• Do you anticipate that you may sell your marks/design/patent?

25. LAWPLUS 25
Strategy Considerations
3. For trademark protection, do you anticipate significant problems in
registering any of your local mark(s)?
• If yes, applicants should use well-established, registered marks as the
basis for international application.
• Otherwise, for a new or unregistered trademark, an applicant should
choose only a strong mark that has little chance of facing meaningful
opposition or encountering a refusal of registration based on
descriptiveness, confusion with others, etc.

26. LAWPLUS 26
Strategy Considerations
4. Do you use the same mark (and goods and services description)
globally?
5. Closely monitor your trademark portfolios and mark all the
deadlines.
NOTE: Keep in mind that these international IP systems do not completely
replace local/national filing. National application still exists.

27. LAWPLUS 27
Q&A

28. LAWPLUS 28
Unit 1401, 14th Floor
990 Abdulrahim Place
Rama IV Road, Bangkok 10500
Tel. +66 (0)2 636 0662
Fax+66 (0)2 636 0663
Room 517, Yangon International Hotel
No. 330 Corner of Ahlone and Pyay Roads
Dagon Township, Yangon, Myanmar
Tel. +95 9 505 6667
Tel. +95 92 6111 7006
•www.lawplusltd.com
kowit.somwaiya@lawplusltd.com