Mark Andrew C.

Herrin
ASEAN Secretariat
Outline
• Structure and purpose of FTA negotiations
• List of “ASEAN+1” FTA’s
• Discussion on existing FTA Provisions
• Trademarks and Geographical Indications
• WIPO Administered Treaties (TM and GI)
• What’s in store for ASEAN?
FTA Structure and Purpose: Some Concepts
• Article 1: Objectives (AANZFTA)
Each Party confirms its commitment to reducing impediments to trade and investment by
promoting deeper economic integration through effective and adequate creation,
utilisation, protection and enforcement of intellectual property rights, taking into account
the different levels of economic development and capacity and differences in national
legal systems and the need to maintain an appropriate balance between the rights of
intellectual property owners and the legitimate interests of users in subject matter
protected by intellectual property rights.

• WTO - TRIPS as a baseline

• TRIPS Plus (TRIPS+) provisions
• Structure of Negotiations
• Ratification and Amendment of Laws
• Stakeholders Role
• Role in National IP Strategies
IP in ASEAN Free Trade Agreements
• ASEAN-China (ACFTA) 2002
• ASEAN-India (AIFTA) 2003
• ASEAN-Korea (AKFTA) 2005 - (Framework Agreement -> Cooperation)
• ASEAN-Japan (AJCEP) 2008
• ASEAN-Australia-New Zealand (AANZFTA) 2009
• ASEAN-Hong Kong (AHKFTA) 2017
• [ASEAN+5] Regional Comprehensive Economic Partnership (RCEP)
2021+
ASEAN China Free Trade Area (ACFTA)
• The negotiations between the Parties to establish the ASEAN-China
FTA covering trade in goods shall also include, but not be limited to
the following:

h. facilitation and promotion of effective and adequate protection of trade-

related aspects of intellectual property rights based on existing WTO, World
Intellectual Property Organization (WIPO) and other relevant disciplines.”

• Protocol to Amend (2012) – IP included in Economic and Technical

Cooperation
ASEAN-India Free Trade Area (AIFTA)
• Article 6: Areas of Economic Cooperation
xx
B. Sectors of cooperation
xx
Viii. Others: xxx intellectual property rights
ASEAN-Korea Free Trade Area (AIFTA)
• Chapter 3: Economic Cooperation
Article 3.1: Scope and Implementation of Cooperation
xx
J. Intellectual Property
ASEAN Japan Comprehensive Economic Partnership
(AJCEP)
• Article 53: Fields of Economic Cooperation
xx
(c) Intellectual Property
ASEAN-Hong Kong FTA
• Chapter 10: Intellectual Property

Article 1: Affirmation of the TRIPS Agreement

Each Party affirms its rights and obligations with respect to

another Party under the Agreeement on Trade-Related
Aspects of Intellectual Property Rights in Annex 1C to the
WTO Agreement (the “TRIPS Agreement”)

Article 2 Co-operation
ASEAN-Australia-New Zealand Free Trade Area
(AANZFTA)
• Article 3 Affirmation of the TRIPS Agreement
Each Party affirms its rights and obligations with respect to each other Party under the
TRIPS Agreement.

• Article 7 Trademarks and Geographical Indications

1. Each Party shall maintain a trademark classification system that is consistent with
the ”Nice Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks”, as amended from time to
time.
2. Each Party shall provide high quality trademark rights through the conduct of
examination as to substance and formalities and through opposition and
cancellation procedures.
3. Each Party shall protect trademarks where they predate, in its jurisdiction,
geographical indications in accordance with its domestic law and the TRIPS
Agreement.
4. Each Party recognises that geographical indications may be protected through a
trademark system.
RCEP: General Information
• 15 countries, 30% global GDP
• Signed on 15 November 2020
• Requires ratification by 6 ASEAN Member States (AMS) and 3 non-AMS to enter into
force. Ratified by China, Japan, Singapore, and Thailand.

Chapter 11: Intellectual Property

The Intellectual Property Chapter provides a balanced and inclusive approach to the
protection and enforcement of intellectual property rights in the region. Aside from
featuring provisions relating to harmonising the protections for the standard suite of
intellectual property rights, this Chapter provides for the protection of intellectual property
rights beyond the level of the WTO Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), including provisions relating to technological
protection measures and enforcement in the digital environment, as well as appropriate
criminal procedures and penalties against unauthorised copying of a cinematographic work
on a commercial scale. To support intellectual property right holders, this Chapter also
includes provisions to streamline and align procedures for the establishment of certain
intellectual property rights such as those relating to electronic filing of applications and
making relevant information available online. The Chapter also affirms the right to fully use
the flexibilities as duly recognised in the Doha Declaration on the TRIPS Agreement and
Public Health, and also includes provisions related to Genetic Resources, Traditional
Knowledge, and Folklore.
RCEP: Trademarks
• Article 11.19: Trademarks Protection

Each Party shall ensure that any signs or any combination of signs capable of
distinguishing the goods and services of one undertaking from those of other
undertakings, shall be capable of constituting a trademark. Such signs, in
particular words including personal names, letters, numerals, figurative
elements, three-dimensional shapes, and combinations of colours, as well as any
combination of such signs, shall be eligible for registration as trademarks. Where
signs are not inherently capable of distinguishing the relevant goods or services,
a Party may make registrability depend on distinctiveness acquired through use.
No Party shall require, as a condition of registration of a trademark, that signs be
visually perceptible, nor deny registration of a trademark solely on the grounds
that the sign of which it is composed is a sound.
RCEP: Trademarks
• Article 11.20: Protection of Collective Marks and Certification Marks

1. Each Party shall provide that trademarks include collective marks and
certification marks. A Party is not obligated to treat certification marks as
a separate category in its laws and regulations, provided that those marks
are protected.

2. Each Party shall also provide that signs that may serve as geographical
indications are capable of protection under its trademark system in
accordance with its laws and regulations. A Party may require an
adequate description, which can be represented graphically, of the
trademark.
RCEP: Trademarks
• Article 11.21: Trademarks Classification System

1. Each Party shall adopt or maintain a trademark classification system that is

consistent with the Nice Agreement Concerning the International Classification
of Goods and Services for the Purposes of the Registration of Marks done at
Nice on 15 June 1957, as amended from time to time (hereinafter referred to as
the “Nice Agreement” in this Chapter).

2. A Party that relies on translations of the classification system established by

the Nice Agreement (hereinafter referred to as the “Nice Classification” in this
Chapter) shall follow updated versions of the Nice Classification to the extent
that official translations have been issued and published.
RCEP: Trademarks
• Article 11.22: Registration and Applications of Trademarks
1. Each Party shall provide a system for the registration of trademarks, which shall include:
(a) a requirement to provide to the applicant a communication in writing, which may be provided
electronically, of the reasons for a refusal to register a trademark;

(b) an opportunity for the applicant to respond to communications from the Party’s competent
authorities, to contest an initial refusal, and to make a judicial appeal of a final refusal to register a
trademark;

(c) an opportunity to do at least one of the following in relation to a trademark before it has been
registered:
(i) oppose a trademark application; or
(ii) provide the competent authority with information that the trademark application does not satisfy
the requirements for registration;

(d) an opportunity to do at least one of the following in relation to a trademark after it has been
registered:
(i) oppose the registration;
(ii) seek revocation of the registration;
(iii) seek cancellation of the registration; or
(iv) seek invalidation of the registration; and

(e) a requirement that administrative decisions in opposition, revocation, cancellation, or invalidation

proceedings shall be reasoned and in writing. Such decisions may be provided electronically.
RCEP: Trademarks
• Article 11.22: Registration and Applications of Trademarks
2. Each Party shall provide:

(a) a system for the electronic application for processing, registering, and maintenance of,
trademarks; and
(b) a publicly accessible online electronic database of trademark applications and registrations.
For the purposes of this subparagraph, “administrative decisions” include quasi-judicial
decisions.
• Article 11.23: Rights Conferred

Each Party shall provide that the owner of a registered trademark shall have the exclusive right to
prevent all third parties not having the owner’s consent from using in the course of trade identical
or similar signs for goods or services that are identical or similar to those goods or services in
respect of which the trademark is registered, where such use would result in a likelihood of
confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of
confusion shall be presumed. The rights described in this Article shall not prejudice any existing
prior rights, nor shall they affect the possibility of a Party making rights available on the basis of
use.
RCEP: Trademarks
• Article 11.24: Exceptions
• A Party may provide limited exceptions to the rights conferred by a
trademark, such as fair use of descriptive terms, provided that such
exceptions take account of the legitimate interests of the owner of the
trademark and of third parties.

• Article 11.25: Protection of Trademarks that Predate Geographical

Indications
• Each Party shall protect trademarks where they predate, in its jurisdiction,
geographical indications, in accordance with the TRIPS Agreement.
RCEP: Trademarks
• Article 11.26: Protection of Well-Known Trademarks
1. Each Party shall provide for appropriate measures to refuse or cancel the
registration, and to prohibit the use, of a trademark that is identical or similar to a well-
known trademark, for identical or similar goods or services, if the use of that trademark
is likely to cause confusion with the prior well-known trademark.
2. Each Party recognises the importance of the Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks as adopted by the Assembly of the
Paris Union for the Protection of Industrial Property and the General Assembly of
WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States
of WIPO, 20 to 29 September 1999.
3. No Party shall require, as a condition for determining that a trademark is a well-
known trademark, that the trademark has been registered in that Party or in another
jurisdiction, included on a list of well-known trademarks, or given prior recognition as a
well-known trademark.
RCEP: Trademarks
• Article 11.27: Bad Faith Trademarks
• Each Party shall provide that its competent authority has the authority to refuse an application or
cancel a registration where the application to register the trademark was made in bad faith in
accordance with its laws and regulations.

• Article 11.28: One and the Same Application Relating to Several Goods or Services
• Each Party shall provide that one and the same application for registration of a trademark may
relate to several goods or services, or any combination thereof, irrespective of whether they
belong to one class or to several classes of the Nice Classification.
• For greater certainty, a Party may comply with the obligation to provide for appropriate measures
to prohibit the use of the trademark that is identical or similar to a well-known trademark under
this paragraph by providing its judicial authorities with the authority to prohibit the use of such a
trademark.
• For the purposes of this paragraph, a Party may treat “a reproduction, an imitation, or a
translation of a well-known trademark” as “identical or similar to a well-known trademark”.
• The Parties understand that a well-known trademark is one that was already well-known before,
as determined by a Party, the application for, registration of, or use of the first-mentioned
trademark.
• For the purposes of this Article, the competent authority of a Party may take into consideration
whether the trademark is identical or similar to a well-known trademark of another person.
RCEP: Geographical Indications
• Article 11.29: Protection of Geographical Indications
• Each Party shall ensure in its laws and regulations adequate and effective means to protect
geographical indications. Each Party recognises that such protection may be provided through
a trademark system, a sui generis system, or other legal means, provided that all requirements
under the TRIPS Agreement are fulfilled.
• Article 11.30: Domestic Administrative Procedures for the Protection of Geographical
Indications
1. If a Party provides domestic administrative procedures for the protection of geographical
indications, whether through a trademark or a sui generis system, that Party shall with respect
to applications for that protection:
(a) receive those applications for the protection of geographical indications without requiring
intercession by a Party on behalf of its nationals;
(b) process those applications in compliance with reasonable procedures and formalities;
(c) ensure that its laws and regulations governing the protection of geographical indications are
readily available to the public and clearly set out the procedures relating to the protection of
geographical indications including procedures relating to the filing of applications;
(d) make available information to allow the public to obtain guidance concerning the procedures for
filing applications for the protection of geographical indications, and allow an applicant or their
representative to ascertain the status of specific applications; and
(e) ensure that such applications are published for opposition and provide procedures for opposing
geographical indications that are the subject of applications. Oppositions shall be received without
requiring intercession by a Party on behalf of its nationals.
2. With respect to the protection of a geographical indication referred to in paragraph 1, a
Party shall provide procedures for cancellation of the protection afforded to a geographical
indication.
RCEP: Geographical Indications
• Article 11.31: Grounds for Opposition and Cancellation
1. With respect to the opposition procedures referred to in subparagraph 1(e)
of Article 11.30 (Domestic Administrative Procedures for the Protection of
Geographical Indications), each Party shall provide procedures that allow at
least interested persons to oppose the protection of a geographical indication,
and that allow for any such protection to be refused at least on the ground that
the geographical indication is a term customary in common language as the
common name for the relevant good in the territory of that Party.
2. If a Party provides protection of a geographical indication through the
procedures referred to in Article 11.30 (Domestic Administrative Procedures for
the Protection of Geographical Indications) to the translation or transliteration
of that geographical indication, that Party shall make available at least the
ground which is the same as that referred to in paragraph 1 with respect to
oppositions to the protection of that translation or transliteration.
RCEP: Geographical Indications
• Article 11.31: Grounds for Opposition and Cancellation
3. With respect to the procedures referred to in paragraph 1, in determining whether
a term is a term customary in common language as the common name for the relevant
good in the territory of a Party, each Party shall ensure that its competent authorities
have the authority to take into account how consumers understand the term within
the territory of that Party. Factors relevant to such consumer understanding may
include:
(a) whether the term is used to refer to the type of good in question, as indicated by
competent sources such as dictionaries, newspapers, and relevant websites; and
(b) how the good referenced by the term is marketed and used in trade in the territory of
that Party.
4. With respect to the cancellation procedure referred to in paragraph 2 of Article
11.30 (Domestic Administrative Procedures for the Protection of Geographical
Indications), no Party shall preclude the possibility that the protection of a
geographical indication may be cancelled, or otherwise cease, on the basis that the
protected term has ceased meeting the conditions upon which the protection was
originally granted in that Party.
RCEP: Geographical Indications
• Article 11.32: Multi-Component Terms
• With respect to the procedures referred to in Article 11.30 (Domestic Administrative Procedures for the
Protection of Geographical Indications) and Article 11.31 (Grounds for Opposition and Cancellation), an
individual component of a multi-component term that is protected as a geographical indication shall
not be protected in a Party if that individual component is a term customary in the common language
as the common name for the associated good in the territory of that Party. Where a Party applies this
Article to geographical indications for wines and spirits or applications for those geographical
indications, the Parties understand that nothing in this Section shall require a Party to protect a
geographical indication of any other Party with respect to products of the vine for which the relevant
indication is identical with the customary name of a grape variety that exists in the territory of that
Party.
• A Party shall not be required to apply this paragraph to applications for geographical indications for
wines and spirits.
• For the purposes of this subparagraph, a Party’s authorities may take into account, as appropriate,
whether the term is used in relevant international standards recognised by the Parties to refer to a type
or class of good in the territory of that Party.

• Article 11.33: Date of Protection of a Geographical Indication

• The protection of a geographical indication through a Party’s domestic administrative
procedures referred to in Article 11.30 (Domestic Administrative Procedures for the
Protection of Geographical Indications) shall commence no earlier than the filing date of the
application for the protection in that Party or the registration date in that Party, as
applicable.
RCEP: Geographical Indications
• Article 11.34: Protection or Recognition of Geographical Indications Pursuant to International
Agreements
• If a Party protects or recognises a geographical indication pursuant to an international agreement
involving a Party or a non-Party, and that agreement is concluded after the date of entry into
force of this Agreement for that Party, and that geographical indication is not protected through
the procedures referred to in Article 11.30 (Domestic Administrative Procedures for the
Protection of Geographical Indications), that Party shall:

(a) make available to the public information concerning the procedures for protection or
recognition of geographical indications, and if applicable, allow at least interested persons to
ascertain the status of requests for protection or recognition;
(b) ensure that those geographical indications that are being considered for protection or
recognition are published for opposition, provide procedures for at least interested persons to
oppose those geographical indications on the ground referred to in paragraph 1 of Article 11.31
(Grounds for Opposition and Cancellation), and apply Article 11.32 (Multi-Component Terms)
with respect to those procedures; and
(c) make available to the public details regarding the terms that the Party is considering
protecting or recognising through an international agreement involving a Party or a non-Party.
For the purposes of this Article, “administrative procedures” include quasi-judicial procedures.

• For greater certainty, where a Party protects a geographical indication through its trademark
system, the filing date referred to in this Article includes, as applicable, the priority filing date
under the Paris Convention.
RCEP: Geographical Indications
• Article 11.35: Protection or Recognition of Geographical Indications under
Concluded International Agreements
1. No Party shall be required to apply Article 11.34 (Protection or Recognition of
Geographical Indications Pursuant to International Agreements) to geographical
indications that have been specifically identified in, and that are protected or
recognised pursuant to, an international agreement involving a Party or a non-Party,
provided that the agreement was concluded prior to the date of entry into force of
this Agreement for that Party.

2. In respect of international agreements referred to in paragraph 1 that permit the

protection or recognition of a new geographical indication, a Party shall:
(a) apply subparagraph (c) of Article 11.34 (Protection or Recognition of Geographical
Indications Pursuant to International Agreements); and
(b) ensure an opportunity for at least interested persons to comment regarding the
protection or recognition of the new geographical indication for a reasonable period of
time before such a term is protected or recognised.

A Party may comply with this paragraph by complying with the obligations under Article
11.30 (Domestic Administrative Procedures for the Protection of Geographical
Indications) and Article 11.31 (Grounds for Opposition and Cancellation).
Discussion on existing FTA TM and GI provisions
• GI – EU system vs. USA system
• GIs are protected under the WTO Agreement on Trade-Related Aspects of Intellectual
Property (TRIPS) but at a lower level than in the EU. It is necessary to show evidence of
consumer confusion to prevent the use of a GI term. The Commission notes that this may be
very difficult when the true origin is indicated (for instance “Australian Feta”), when the GI
term is accompanied by expressions such as “like”, “kind”, “style”, etc. (for instance ”
Prosciutto Parma style”), or when the GI is used in translation.
Wine and spirit GIs are given a higher level of protection under TRIPS. Subject to a number of
exceptions, they have to be protected even if misuse would not cause the public to be misled
for example if the true origin is indicated. Protection against use in translation is also
automatic and objective, and use of expressions such as “like”, “kind”, etc. is also prevented.
The EU has raised the possibility of extending the higher level of protection beyond wines
and spirits during the Doha Round of multilateral trade negotiations, but has been strongly
rebuffed by other WTO members including the US who reject this approach. As long as TRIPS
does not provide a satisfactory level of protection for the EU’s GIs, it sees bilateral FTAs as a
way to achieve progress on its goals.

http://capreform.eu/geographical-indications-gis-in-the-us-eu-ttip-negotiations/
WIPO Administered Treaties
• Article 11.9: Multilateral Agreements
1. Each Party shall ratify or accede to the following multilateral agreements to
which it is not yet party:
(a) the Paris Convention for the Protection of Industrial Property done at Paris on 20 March 1883,
as revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (hereinafter
referred to as the “Paris Convention” in this Chapter);
(b) the Berne Convention for the Protection of Literary and Artistic Works done at Berne on 9
September 1886, as revised at Paris on 24 July 1971 and amended on 28 September 1979
(hereinafter referred to as the “Berne Convention” in this Chapter);
(c) the Patent Cooperation Treaty done at Washington on 19 June 1970, as amended on 28
September 1979 and modified on 3 February 1984 and 3 October 2001 (hereinafter referred to
as the “PCT” in this Chapter);
(d) the Protocol Relating to the Madrid Agreement Concerning the International Registration of
Marks adopted at Madrid on 27 June 1989, as amended on 3 October 2006 and 12 November
2007 (hereinafter referred to as the “Madrid Protocol” in this Chapter);
(e) the WIPO Copyright Treaty adopted in Geneva on 20 December 1996 (hereinafter referred
to as the “WCT” in this Chapter);
(f) the WIPO Performances and Phonograms Treaty adopted in Geneva on 20 December 1996
(hereinafter referred to as the “WPPT” in this Chapter); and
(g) the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind,
Visually Impaired, or Otherwise Print Disabled adopted in Marrakesh on 27 June 2013
(hereinafter referred to as the “Marrakesh Treaty” in this Chapter).
WIPO Administered Treaties
2. Each Party shall endeavour to ratify or accede to the following multilateral agreement
to which it is not yet party: the Budapest Treaty on the International Recognition of the
Deposit of Micro-organisms for the Purposes of Patent Procedure done at Budapest on
28 April 1977, as amended on 26 September 1980.

3. If any Party intends to ratify or accede to any of the following multilateral agreements,
it may seek to cooperate with other Parties to support its ratification or accession to
and its implementation of that multilateral agreement:

(a) the 1991 Act of International Convention for the Protection of New Varieties of
Plants as revised at Geneva on 19 March 1991;
(b) the Geneva Act of the Hague Agreement Concerning the International Registration
of Industrial Designs done at Geneva on 2 July 1999;
(c) the International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organisations done at Rome on 26 October 1961
(hereinafter referred to as the “Rome Convention” in this Chapter); and
(d) the Singapore Treaty on the Law of Trademarks done at Singapore on 27 March
2006.
Looking Ahead: What’s in store for ASEAN?
• ASEAN-Canada FTA
• Effect of the CPTPP and a possible ASEAN-EU FTA
• New WIPO Treaties?