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.
  • For certification marks and collective marks, the applicant is required to submit a rule on use and a list of authorized users in Thai.
  • The relevant forms, e.g. the application form and forms for various notices, will be prescribed by the Director-General of the Department of Intellectual Property. In addition, the DIP establishes a specialized unit to handle both inbound and outbound applications under the Madrid System.

© Mr Nathapong TongkaewPartner at Domnern Somgiat & Boonma Law Office Limited

Bio of IPR Expert Mr. Nathapong Tongkaew

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Email: nathapong@dsb.co.th

Mr. Tongkaew graduated from Thammasat University’s Faculty of Law in 2003 and was admitted to the Thai Bar in 2004. He also holds a Master’s Degree in law from Harvard University. He joined DS&B in October 2004 and became the firm’s newest partner on 1 January 2017. He handles contentious and non-contentious trademark prosecution matters, IP enforcement matters and a number of non-IP matters.

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.

In order to fully benefit from the Customs protection, it is advisable for the SMEs to record their IP (trade marks and copyrights mostly) with the Vietnamese Customs. To seek customs recordal, SMEs must file an application with the Department of Customs Control and Supervision under the General Department of Customs. No later than 20 days from the receipt of the request, the Department of Customs Control and Supervision should notify the SMEs whether the application is accepted or not. The effective period of the recordal is two years from the date of the acceptance notice by the Department. The period may be extended for two more years upon request. After the extension period expires, companies must re-file a new application if they wish to pursue the customs recordal.

Although registering with Vietnamese Customs is not mandatory, it is advisable to be included to their database, as it will help the customs authorities to recognize counterfeit versions of SMEs’ product, and improve the chances of such suspect items being blocked at the border. If SMEs are aware of a suspected illegal shipment of their products, they can also work together with Vietnamese customs to detain such shipments.

It is particularly advisable for the SMEs to be vigilant and to report suspected infringements of their products to the Vietnamese Customs authorities because Infringers are demonstrating increasingly sophisticated counterfeiting methods, and are finding new ways to try to outwit the Customs and other IP enforcement authorities.

Case Study

This case study demonstrates the importance of cooperating with the Vietnamese customs to best protect company’s IP. It is particularly important because the Customs are generally looking out for identical products that are obviously infringing IP rights and could sometimes miss products that could be possibly infringing the original goods.

Background

A power supply company (Company A) has registered its mark ”SANTAK” in Vietnam since 1995 for “Uninterruptible Power Systems – UPS”. Further, ”SANTAK” is a well-known trade mark which has a large portion of the Asian market. Company A had information of a shipment of products bearing the sign ”SANTAKUPS” being imported from China by a Vietnamese company.

Advice

Company A was advised to register its mark ”SANTAK” with Customs and cooperate with the IP Enforcement and Anti-Counterfeiting Department within the General Customs Office and the Haiphong Customs Office to investigate and detect the shipment of products bearing the sign ”SANTAKUPS”.

Outcome

After the discovery of the shipment of 162 products bearing the sign ”SANTAKUPS” imported from China by a Vietnamese company, Company A’s representative requested the competent authorities to suspend the import procedures of the shipment. Haiphong Department of Custom issued a Decision to keep the shipment under custody according to administrative procedures. “SANTAKUPS” was written as one word, but the intent was to make a customer think that this was a combination of the words Santak and UPS. In this context, UPS is an abbreviation of uninterruptible power supply, so UPS did not create a distinction. Because of this, a comparison was only made with the word ”SANTAK” which was identical to the protected trade mark. Upon consideration of these findings, the competent Authority issued a Decision to apply sanctions under regulations of relevant Law: imposition of a high monetary fine and removal of “SANTAKUPS” from all infringing goods.

Lessons Learned

Through the registration of the mark with Customs as well as cooperation between Company A and Customs, Company A timely prevented the risk of infringement of trade mark in Vietnam by not only protecting their own interests in the market but also their reputation for the trade mark “SANTAK”.

South-East Asia IPR SME Helpdesk Team

 

SEA IPR

 

The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (question@southeastasia-iprhelpdesk.eu) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.

The South-East Asia IPR SME Helpdesk is co-funded by the European Union.

To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.

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.

Continue reading “Patent Strategies for Startups” »

Top 5 Misconceptions Start-ups Have about Patents in Singapore

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For Start-ups expanding in South-East Asia, IP protection should be considered one of its core priorities. Today’s blog post 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 five common misconceptions regarding patenting – something which will be useful for any European Start-up looking to expand their business in South-East Asia, and Singapore in particular.

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Intellectual property protection is an important consideration for most start-ups. The exclusive monopoly that comes with patents can help start-ups carve a niche in a crowded marketplace. Patents have always been important to some industries like Big Pharma where they develop expensive drugs in lengthy R&D processes. They have become increasingly important and relevant to new business models and technologies in the technology sector.

While the concept of a patent is fairly simple to understand, there are several misconceptions about patents which I’d love to clarify. It is important to clarify these misconceptions before embarking on the intensive patenting process.

Myth 1: A patent applicant has rights to enforce his pending patent

It is a common mistake amongst first time patentees to think that once their patent application has been filed, they will immediately gain the rights to sue third parties for infringement of their patent. Rights to bring about a suit for infringement are in fact only available to the patent owner after his patent has been granted. The Intellectual Property Office of Singapore indicates that patents filed in Singapore can take between 2 to 4 years to grant. Thus patentees should be aware that during the period when the patent is still pending, they are not able to take action against third parties that commercially exploits their invention.

Continue reading “Top 5 Misconceptions Start-ups Have about Patents in Singapore” »