ARISE+ IPR facilitates the update to the ASEAN Common Guidelines for the Substantive Examination of Trade Marks

The second edition of the ASEAN Common Guidelines for the Substantive Examination of Trade Marks was published on the ASEAN IP Portal website and on the ARISE+ IPR website. The publication of the updated guidelines marks the end of a multi-year process that began in Bangkok, Thailand, during the 8th Trademark Consultation Meeting organized by ARISE+ IPR, where discussions started on the possible updates for the Common Guidelines.

The Common Guidelines were revised to incorporate relevant new standards that reflect best practices in Trade Mark registration criteria including topics where IP Offices converge on their practices while incorporating updated laws and regulations of each ASEAN Member State.

An important update in the revised Common Guidelines is the move towards the acceptability of new types of Trade Marks. In the past, the Common Guidelines only made references to Marks that were ‘visually perceptible.’ In contrast, the updated version incorporates all marks that are ‘perceptible,’ including sound marks, smell marks, taste marks and tactile marks. This change reflects of the changing Trade Mark landscape and ASEAN’s making the necessary adaptations to account for this.

Another significant element to highlight concerning this update is the work done in further developing certain topics of interest, incorporating new criteria and explanatory examples that bring greater clarity to the different users of the guidelines on such topics. Among them, we could  highlight those relating to (1) when figurative mark containing purely descriptive/non-distinctive words passes the absolute grounds examination because the figurative element renders sufficient distinctive character, (2) the scope of protection which should be given to trade marks registered in black and white, and (3) the impact of non-distinctive/weak components of marks in the examination of likelihood of confusion.

These changes also bring the European Union and the ASEAN examination practices close together.

Various ARISE+ IPR activities have directly contributed to, or have been derived from, the ASEAN Common Guidelines. Activity 3 of AWP1 (Updating the ASEAN Common Guidelines for Substantive Examination of Trademarks), Activity 6 of AWP2 (Support to the Organization of the ASEAN Trademark Convergence Network) and Activity 2 of AWP2 (Training on the ASEAN Common Guidelines for the Substantive Examination of Trade Marks) are all activities with direct links to the ASEAN Common Guidelines.

The ASEAN Common Guidelines for the Substantive Examination of Trade Marks are part of a regional commitment in the context of building a more closely integrated marketplace in the medium and long term. Its publication is an effort of the ASEAN IP Offices seeking to increase transparency and predictability for the benefit of users and examiners of IP Offices.