An Introduction to Intellectual Property Protection and Enforcement in China and South-East Asia

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This article is written by our China IP Expert, Ms Alessandra Chies, on the occasion of the Texworld Trade Fair, the No.1 European Trade Fair for Worldwide Apparel Sourcing which this year took place in Paris on 18-21 September. It gathered over 600 international suppliers, companies and EU SMEs, as well as about 950 fabrics manufacturers from 27 countries. 90px-Aguayos This article provides a concise yet comprehensive introduction to Intellectual Property protection and enforcement in China and South-East Asia, and summarizes the main talking points discussed by Alessandra Chies at Texworld on 18 September 2017. 

Intellectual Property (IP) protection is a primary method for securing a return on investment in innovation, offering to IP owners a competitive edge that others will not have. SMEs invest a tremendous amount of time, passion and monetary efforts in R&D and marketing, but often fail to consider that, in most countries, the only way to enjoy exclusive rights over their creative efforts and their business identity (trademark) is through IPRs registration. Considering that in the textile sector one single product can brilliantly encompass almost all form of IP rights, understanding and defending them is a paramount objective: a Patent for the new man-made yarn, the Design for an innovative texture of the fabric, the Copyright for the drawing painted on it, the Trade-secret for the dying procedure and the Trademark as representation of the business identity, all in one small piece of cloth.

The point is that Trademarks, Designs, Patents, are territorial rights and most countries adopt the first to file principle: this means in practice that the IPRs belong to their creator only if their creator was the first one to register it in that Country. And each Country in the world has its set of rules, its peculiarities, its advantages and pitfalls. Without being secured through registration, with the assistance of lawyers, expert in the jurisdiction, your IPRs can be freely exploited by anybody else. Considering the importance of the China market and the wonderful opportunities it offers in terms of production abilities, raw and semi-processed materials and the growing purchasing power and awareness of Chinese consumers, SMEs cannot afford to put-off investments in IP registration and enforcement in China and in the South-East Asian countries that are slowly but steadily emerging. Continue reading “An Introduction to Intellectual Property Protection and Enforcement in China and South-East Asia” »

Thailand Joins Madrid Protocol

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On August 7, 2017, the Thai government officially deposited the instrument of accession to the Madrid Protocol with the WIPO, marking the starting date of the three-month period before the Protocol becomes effective in Thailand. Consequently, the Madrid System will come into effect for Thailand (the 99th member) as from November 7, 2017.

In its instrument, the government makes declarations on three issues. Firstly, a period to issue provisional refusal will be extended to eighteen months, with further extension possible in case of an opposition. Secondly, an individual fee to be specified in Ministerial Regulations to be issued by virtue of the accession will apply to international applications/registrations designating Thailand. Thirdly, recordal of a license agreements with the International Bureau will not be effective with regard to Thai applications/registrations.

After this deposition, the next step is to issue Ministerial Regulations to elaborate on the process. It is anticipated that the Regulations will contain the following details:

  • All documents submitted through the Thai Trademark Office to the International Bureau must be in English. If the Thai Office finds an international application incorrect or incomplete, the applicant will have to remedy it within 15 days upon receipt of a notice. Otherwise, the Thai Office may not be able to forward the application to the International Bureau within 120 days and the date of filing with the Thai Office will not be considered as the filing date of the international application. If the applicant does not comply with the Thai Office’s notice within 120 days, the application will be deemed abandoned.
  • For an international application designating Thailand, the Thai Trademark Office will translate the necessary content into Thai. In case of provisional refusal, the applicant is required to appoint an agent in Thailand to deal with it.  The response may have to be in Thai. In case of failure to respond, the Thai Office may partially accept the application for the goods/services in relation to which the refusal does not apply.

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Enforcing IP Rights with the Customs in Vietnam: A Case Study

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shutterstock_118547785Border control can be an effective means for European SMEs for enforcing their IP rights in Vietnam, and it serves the purpose of preempting and suppressing IP counterfeits of SMEs’ products at Vietnam’s borders. Border control has gained more attention over the past few years from business owners wishing to protect their IP in Vietnam as the Vietnamese government recently granted the Customs more powers, making it more efficient.

Even though, Vietnamese Customs are actively looking for possible infringing products crossing the border of the country, it is advisable for the European SMEs to actively cooperate with the Customs authorities by recording their IP with the Customs and by actively monitoring the market and letting the Customs know of suspected infringing shipments, to fully benefit from the Customs protection.

How does Customs Protection Work

Vietnamese customs laws prohibit the importation of goods that infringe IP Rights, and Vietnamese Customs has the authority to impose fines on infringers and confiscate infringing goods for import. However, infringing goods for export are not subject to any penalties imposed by the Vietnamese authorities so far. If the infringement of IP Rights exceeds a certain threshold, the Customs authorities can also arrange criminal proceedings to be brought against the infringing party. Continue reading “Enforcing IP Rights with the Customs in Vietnam: A Case Study” »

Indonesia’s New Trademark Law – An Overview of the Changes

trademarkToday’s blog post has been kindly drafted for us by our South-East Asia IPR SME Helpdesk expert Mr.  Somboon Earterasarun from Tilleke & Gibbins. In this article, Mr. Earterasarun gives a comprehensive overview on the latest changes in Indonesia’s Trade Mark Law that came to force in November  last year. 

The Indonesian Parliament approved amendments to the country’s Trademark Law on October 27, updating the Trademark Law No. 15, which had been in force since 2001. The amended Trademark Law has now entered into force—it took effect on November 28, 2016—introducing a number of significant changes that refine current practices, add new features, and clarify certain provisions.

Some of the major changes include provisions designed to speed up the examination process. The new law also increases criminal penalties and provides more clarity on preliminary injunctions, both of which may help lead to better enforcement. Another change relating to the transfer of ‘‘associated marks’’ may be particularly important to international rights holders who need to transfer registrations to business partners.

Publication and Substantive Examination

Under the new Trademark Law, the publication stage—during which oppositions can be made—must now take place before the examiner conducts the substantive examination stage (i.e., the stage in which the distinctiveness and similarity to prior-registered marks are examined). The publication stage now lasts for two months, instead of three months. It is also the only opportunity for trademark owners to oppose third-party applications prior to registration. Continue reading “Indonesia’s New Trademark Law – An Overview of the Changes” »

Patent Strategies for Startups

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Today’s Post will focus on Patent Strategies for Startups in South-East Asia and has been kindly drafted for us by Ms. Chan Wai Yeng who is a patent specialist at Taylor Vinters Via LLC. Ms. Chan Wai Yeng will explore three patent strategies and several alternatives to ensure your product is best protected.

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Startups generally worry that acquiring a patent is prohibitively expensive

As discussed in the first patent article, the cost of patenting is high and generally several order of magnitudes higher than the cost of acquiring other IP rights such as trade mark and industrial design rights.

A cohesive patent strategy can yield significant competitive advantage

The high level of financial investment involved in patent filing may deter startups from developing a comprehensive IP strategy that includes patent filings at its initial development stage. However, startups with a cohesive patent strategy that aligns with their business can benefit from gaining a strong competitive advantage in the market. Having a patent filing strategy can also mitigate litigation risks from competitors.

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