Trade mark search: Why it is important and how to conduct it properly

WRITTEN BY XUAN NGUYEN

Trade marks (brands) represent one of the principal assets of a company. Trade mark is crucial to your success because it allows clients and consumers to easily identify and find products and services. Protection comes with a price, and startups and SMEs often have limited budgets. However, in the digital economy, trade mark protection is well worth the investment. It secures legal certainty and prevents others from illegally copying or using your mark to take advantage of your reputation. Strong trade mark protection enables you to stay competitive and nurture a safe environment for thriving cross-border expansion.

search-2951638_1920(Photo source: https://pixabay.com/)

Trade mark searches are an integral part of any trade mark protection strategy, but many companies do not routinely perform them or do not do so thoroughly enough. In this article we will provide you with a full rundown of the importance of trade mark searches and how to effectively conduct them.

1. Why are trade mark searches needed?

A pre-filing trade mark search

By finding out what other trade marks are out there, you will learn whether there is room for the trade mark you want to protect. A pre-filing trade mark search allows you see if there are any pre-registered/pre-filed trade marks that are identical or significantly similar to yours (which may lead to their registration being refused). If the search results reveal the existence of trade marks that are likely to block your trade mark registration, at least you have a hint before taking further steps, for example by changing the proposed trade mark or removing prior trade marks if feasible (this may be achieved via amicable negotiations or by cancellation actions, which are usually attempted with the support of a trade mark expert). As a result, these searches will help businesses to avoid wasting significant time and resources preparing and filing an application for a trade mark that may not be available for registration.

Watch out for potential infringements

Owning a registered trade mark does not automatically guarantee that someone else do not use it, or register a similar trade mark. Regular trade mark monitoring is highly recommended, as it can result in the early detection of potential infringements such as counterfeits, copycats, bad faith registrations, etc.

In practice, copycats usually operate in the same industry as the trade mark holder; by using your marks they can easily mislead consumers about the quality and origin of their products and services. Consequences can include damaging your reputation, decreasing your revenue and preventing your expansion plans. The early detection of infringement allows you to quickly initiate a proper solution to stop or mitigate the violations and to notify your clients in a timely fashion, thereby avoiding brand dilution or misleading messages.stop-634941_1920

(Photo source: https://pixabay.com/)

Moreover, trade mark protection is territorial: protection exists only in the country where you have registered your trade mark. Developing an efficient brand protection plan for cross-border markets has been seen as a big challenge for many businesses, especially SMEs. In fact, like many other countries, most South-East Asian countries apply the first to file principle for trade mark protection, which gives priority to those who first file an application to register the trade mark. This rule, unfortunately, opens the door for bad-faith registration practices i.e., a third party (a trade mark squatter, local company or any other party) intentionally files a trade mark application in a particular country before the trade mark owner to become a legal owner of the trade mark. By successfully registering your trade mark, they can take advantage of your successful business for commercial gain in your target market – this can have various consequences, from damaging your reputation to excluding you from the market. However, after a trade mark filing, intellectual property (IP) offices will usually publish the trade mark application for public inspection for a specific period of time, to allow third parties to file an opposition (for example, oppositions can be filed in Cambodia within 90 days, in Singapore within 2 months and in the Philippines within 30 days of the publication date). Detecting bad faith registrations promptly allows you to react in a timely fashion.

2. Where to search?

There are many sources that a brand owner can use to run a trade mark search. Some suggestions are detailed below.

a) Trade mark databases

Global Brand Database 

The Global Brand Database, administered by the World Intellectual Property Organization (WIPO), automatically uploads trade mark records sent by national, regional and international collections – for example from Madrid – The International Trademark System (details of database content sources here).

Through the Global Brand Database, you can:

  • conduct a search to cover multiple sources simultaneously in a large number of countries;
  • search by text, class, goods or services, holder names, countries and even images (using AI search-by-image filter functions).Screenshot 2021-07-01 13.29.51

National trade mark databases

Although the Global Brand Database covers a large number of trade mark collections, it depends on how often national offices communicate updated information to the WIPO. Also, some national databases are not available on the Global Brand Database, Myanmar is one example. Therefore, it is also advisable to run simultaneous and additional searches in the database of your target national IP office to get the latest updates on applications that have been filed/registered.

In South-East Asia, SingaporeVietnamIndonesiaMalaysiathe PhilippinesBruneiLaos and Cambodia are the countries in which trade mark databases are available in English.

b) The internet, e-commerce platforms and social media networks

A comprehensive trade mark search should not only review trade mark databases, it should also detect unregistered marks that are being used by third parties on the market and may be infringing your trade mark rights. Conducting searches of multiple sources that counterfeiters, copycats and other criminals may be using to take advantage of your marks is always recommended. Searches should be conducted on the internet, e-commerce platforms and prevailing social media networks.

pexels-photomix-company-230544

(Photo source: https://www.pexels.com/)

With over 87% of the search market share, Google is a dominant search engine worldwide and its share is even higher in South-East Asia (over 90% for most countries in the region)[1]. Conducting a Google search can take you to numerous websites, links, apps and networks that may contain signs of potential infringement. The Covid-19 crisis is accelerating the already thriving digitalisation process, driving more and more businesses and consumers online. Amid this overwhelming wave of online activity, e-commerce platforms have become vital market places to fulfill people’s needs. In South-East Asian countries, Shopee, Lazada, Tokopedia, Bukalapak, Tiki, etc. are the most-visited e-commerce sites[2] where you can find various types of fake products in different price ranges. Using social media networks such as Facebook, Instagram or TikTok in order to reach out to consumers and sell counterfeits is also quite common in the region.

3. Conclusion

Some popular methods that businesses can use to run trade mark searches have been outlined above. However, consulting a trade mark specialist to obtain better search results and practical advice is usually recommended. Comprehensive trade mark searches should take various factors into account. As well as names, key words and images, translations and national phonetic variations of the search terms should be included. Many South-East Asian countries, such as Thailand, Laos, Cambodia, Indonesia, and Myanmar, have their own alphabets, which do not use Roman characters. Using a local specialist to help with trade mark searches is advisable, as they will maximise the search effectiveness by avoiding any gaps.

Moreover, when the results come in, expertise is required in order to carry out a proper analysis. For example, when considering the likelihood of identical or similar marks being confused with one another, an experienced trade mark specialist will know how to assess the situation by properly reviewing the similarity of the products and services that the marks are being used for. They can provide you with a practical assessment of the likely success of your registration application or if you will be able to take actions against potential infringements.

Trade mark searches are vital for your brand protection strategy, especially in the fast-paced digital economy. Being well informed will save you a huge amount of time and resources, and secure a safe way for your business to grow and thrive.

The SEA IP SME Helpdesk developed and published a Guide to Trade Mark protection in South-East Asia (here) and How to Remove Counterfeit Goods from e-commerce Sites in South-East Asia (here).

For more information about IP in SEA, check out our website at https://intellectual-property-helpdesk.ec.europa.eu/regional-helpdesks/south-east-asia-ip-sme-helpdesk_en.

The SEA IP SME Helpdesk is an EU initiative that provides free, practical IP advice to European SMEs in South-East Asia. EU companies can send questions to question@southeastasia-iprhelpdesk.eu and will receive a reply within 3 working days.

[1] https://gs.statcounter.com/search-engine-market-share/desktop/worldwide

[2] https://www.campaignasia.com/article/the-top-10-most-visited-southeast-asia-ecommerce-sites/468523

Intellectual property protection in the e-commerce era: What has changed recently in South-East Asia?

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WRITTEN BY XUAN NGUYEN

 

Over the past few years, South-East Asia (SEA) has witnessed a huge shift to, and booming expansion in, online shopping platforms. As a result, counterfeiters have also quickly adapted to the new trade environment, making large profits by flooding the digital marketplace with a huge amount of counterfeit products. At the same time, governmental agencies need months or even years to update their regulations and rules to catch up. In this article, we will update you on how regulatory authorities in SEA are stepping up to tackle intellectual property (IP) infringement issues in the e-commerce market.

Global consumer shopping habits have changed considerably over the years. According to research conducted by Salesforce, 87% of customers conduct online searches while making decisions on purchases[1]. This has driven brand owners to embrace this trend and shape consumer habits in a way that is favourable for their growth. For example, nowadays live-streaming tactics or the opinions of influencers are very effective solutions for leveraging product sales. In a new report from Payoneer[2], since the height of Covid-19 (March–April 2020), the live-streaming sector has grown by 45% and the live-streaming market is expected to be worth USD 184.3 billion by 2027.

Photo source: https://www.pexels.com/

Photo source: https://www.pexels.com/

More importantly, the Covid-19 pandemic has been one of the most influential factors ever to accelerate digitalisation and shift businesses and consumers online. The new e-Conomy South-East Asia (SEA) research program[3] by Google, Temasek and Bain has revealed significant changes in the digital life of the region. In 2020 alone, 40 million new users joined the internet, making a total of 400 million internet users (which now accounts for 70% of the South-East Asian population). On average across SEA, one of every three (~36%) digital service consumers are new to the service due to Covid-19, and 94% of those intend to continue with the service post-pandemic.

From a legal perspective, the thriving evolution of the digital market has also created a fertile ground for listings that infringe on IP. Let’s take a deeper look at the development of the counterfeiting market online in some SEA countries and analyse the government reactions to these threats.

In Vietnam, during 2020, the national market surveillance agency carried out a high number of raids and seized fake products bound for the market through online sales. Many Vietnamese sellers are willing to pay to advertise their products in order to reach a large audience on Facebook, YouTube, TikTok or Zalo (a widely used messaging app). Live-streaming is used to present products to consumers and encourage them to commit to purchases in a short time. This quickly increases sales of overwhelmingly counterfeit products. For example, vendors in Lao Cai Province (located near the border with China) sourced products from China to sell online, and have made approximately USD 28 million within the past two years[4].

Photo source: https://e.vnexpress.net/

Photo source: https://e.vnexpress.net/

In December 2019 Vietnam’s Ministry of Industry and Trade (MoIT) launched a portal http://chonghanggia.online.gov.vn/ to deal with e-commerce disputes and counterfeits. Individuals and businesses can now access the portal and report infringing activities, such as fake products, brand violations, fraudulent websites or apps, etc. After receiving the information, the respective agencies (such as the eCommerce and Digital Economy Agency, the Market Surveillance, Competition and Consumer Authority, and the Department of Industry and Trade) will work together to settle the case and inform the complainant about the result.

Moreover, a new e-commerce decree has been drafted and is expected to be released soon. This will restrict the sales of fake goods on e-commerce platforms and monitor online trading activities. The decree states that e-commerce platform operators are required to proactively prevent prohibited goods and services, remove them within 24 hours of receiving a request from competent agencies, and to co-operate with relevant rights holders to take-down IP-infringing content or products[5].

Another interesting country to observe is the Philippines, which has witnessed an unprecedented surge of IP-violation complaints during the pandemic. The IP Rights Enforcement Office (IEO) of the IP Office of the Philippines (IPOPHL) received up to 135 complaints in only 9 months in 2020, surpassing the total complaints received in the previous 5 years (2015–2019)[6].

Photo source: https://www.ipophil.gov.ph/

Source: https://www.ipophil.gov.ph/

Among the 135 complaints, 79 are related to online activities. With the alarming increase of IP-violation reports on digital platforms, the IPOPHL set the IEO the task of proposing updates to the 2013 Rules and Regulations on Enforcement as a high priority in order to help the agency to effectively monitor infringement online.

In addition, the IPOPHL is working on an agreement between e-commerce platforms and representatives of rights holders related to requests to take-down IP-infringing content or products. The IPOPHL also strongly supports the adoption of the solidary liability principle in order to improve the online environment by making platforms and service providers entirely accountable for the infringing acts of their client vendors.

Thailand saw a sharp increase in seizures related to IP violations over the course of 2020. According to IP enforcement statistics from the Royal Thai Police[7], the Department of Special Investigation, and the Customs Department, the number of seized items from January to November 2020 (compared with the total amount of seized items in 2019) increased dramatically, by up to 3 427.01%. The majority infringed trade marks and copyright.

IP Enforcement Statistics (Calendar Year) (by the Royal Thai Police, the Department of Special Investigation and the Customs Department) January – November, 2020 Source: https://www.ipthailand.go.th/

IP Enforcement Statistics (Calendar Year) (January – November 2020)
(by the Royal Thai Police, the Department of Special Investigation and the Customs Department) 
Source: https://www.ipthailand.go.th/

To encourage the fight against online counterfeiting, a Memorandum of Understanding (MOU) on the protection of IP rights on the internet was signed between the major online platforms operating in Thailand (Lazada, Shopee, and JD Central) and the representatives of IP rights holders on 11 January 2021[8]. This MOU is expected to facilitate the take-down process on e-commerce platforms, and reduce the amount of fake products being sold online in Thailand.

According to a recent report from the European Commission (the Counterfeit and Piracy Watch List[9]), Indonesia has three e-commerce sites (Bukalapak, Shoppee, Tokopedia) that are to be included in the watch list. They allegedly sell high volumes of counterfeit goods such as electronics, clothing, fashion items, accessories, books, films, mobile phones, cars, spare motor parts and industrial goods. These sites are the top three most popular B2B platforms in the country – Shopee is the most clicked e-commerce site, followed by Tokopedia and Bukalapak. The proactive measures for filtering and detecting infringing offers on the above-mentioned sites are allegedly ineffective, and their processes for removing counterfeit listings are still unreasonably long.

While online counterfeiting is becoming a critical issue in Indonesia, the government has made some initial progress in addressing concerns about it by recently issuing Regulation No. 80 of 2019[10] and Regulation No. 50 of 2020[11]. These regulate several aspects of e-commerce trading, and includes obligations for protecting consumers. The regulations state that e-commerce businesses must provide a complaint service for consumers, must have proper complaint procedures, and must set out a time period for resolving complaints. Moreover, e-commerce operators have to establish a consumer complaint service including the contact details of the Directorate-General of Consumer Protection and Trade Compliance. In addition, consumers can make complaints about online ads that are not in compliance with the relevant laws and regulations through the Director-General of Consumer Protection and Trade Compliance.

Due to SEA’s geographical proximity to China (known as a hotspot for counterfeiting goods but also as a booming centre of online trading), significant efforts are required from governmental agencies in SEA to improve regulations, enhance the effectiveness of their enforcement agencies and establish user-friendly complaint systems to deal with thriving IP-infringing listings in the digital trading environment.

Importantly, IP rights owners should proactively monitor e-commerce and social media platforms to detect counterfeits and quickly proceed with the most appropriate resolution such as take-down notices, warning letters or informing the competent authorities so they can remove the IP-infringing items.

The SEA IP SME Helpdesk developed and published a Guide on How to Remove Counterfeit Goods from e-commerce Sites in South-East Asia, which can be downloaded here.

For more information about IP in SEA, check out our website at https://www.southeastasia-iprhelpdesk.eu/.

The SEA IP SME Helpdesk is an EU initiative that provides free, practical IP advice to European SMEs in SEA. EU companies can send questions to question@southeastasia-iprhelpdesk.eu and will receive a reply within 3 working days.

[1] https://www.salesforce.com/blog/customer-retail-statistics/

[2] https://register.payoneer.com/the-state-of-live-streaming-in-2020/

[3] https://www.bain.com/globalassets/noindex/2020/e_conomy_sea_2020_report.pdf

[4] https://e.vnexpress.net/news/business/economy/vietnam-unhappy-with-facebook-s-lack-of-support-for-tackling-fake-goods-4135371.html

[5] https://www.vir.com.vn/new-draft-decree-tackles-e-commerce-drawbacks-77765.html

[6] https://www.ipophil.gov.ph/news/jan-sept-2020-reports-complaints-on-ip-infringement-surpasses-2015-2019-total/

[7] https://www.ipthailand.go.th/en/ipr-enforcement-operation/item/total2020.html

[8] https://satyapon.com/mou-on-protecting-ip-rightd-on-the-internet-signed/

[9] https://trade.ec.europa.eu/doclib/docs/2020/december/tradoc_159183.pdf

[10] https://www.aseanbriefing.com/news/indonesias-law-on-e-commerce-clear-guidelines-and-compliance-by-november-2021/

[11] https://www.aseanbriefing.com/news/indonesia-issues-implementing-regulation-e-commerce-sector-key-features/

Changing perspective: why you should never underestimate trade secrets’ power

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If you heard about a threat that had already caused a loss of EUR60 billion in economic growth and almost 289000 jobs in Europe alone, that could lead to the loss of one million jobs by 2025, you’d try to do something about it, wouldn’t you?

Those are the estimated losses caused by the theft of trade secrets due to cyber-espionage only. From states to single companies, no one is doing enough to stop this problem.

It is important to change our perspective, to understand what trade secrets are and why they are so relevant, so you and your company can put adequate protection in place, especially when doing business outside Europe.

Starting with the basics: a trade secret is a piece of confidential business information that can be of considerable commercial value and can provide an enterprise with a competitive edge.

In other words, a trade secret can be anything from manufacturing processes or sales or distribution methods to consumer profiles, from advertising strategies to lists of suppliers and clients — as long as it is relevant for your business and you are keeping it secret.

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Most of the legislation used to protect information as a trade secret (and to prosecute infringers) requires companies to put some form of defence in place to protect the confidentiality of the information.

Trade secrets do not need to be registered to be protected and, as long as they are kept as secrets, the legal safeguards last forever.

A recent study commissioned by the European Commission (complete text here, executive summary here) shows that companies, especially SMEs, underestimate both the value of their trade secrets and the chances that they might get stolen due to cybercrime.

Consequentially, companies, especially SMEs, tend to underestimate the impact of a breach in their security. A stolen trade secret can lead to at least four kinds of economic damage.

  • Opportunity costs: the loss of business opportunities and market shares.
  • Negative impacts on innovation: companies lose their investments in R&D when their knowledge is stolen and given to the public.
  • Increase in the cost of cybersecurity: if the company has been attacked the costs of cleaning up the system can be very high, as can increases in cybersecurity insurance.
  • Reputational damage: if the fact that a company has been hacked becomes public knowledge, this will reduce the trust of investors, business partners and even consumers.

The report highlighted the importance of awareness among companies in terms of preventing the loss of trade secrets. A solid legal framework is not enough, you have to do your part, and put necessary protections in place.

SMEs are the main target of cyber thieves and make up the majority of cyber-espionage victims because their cybersecurity protocols are weaker than those of big companies.

Cyber-espionage mostly involves external perpetrators. This is a large part of the problem, but it’s not the only issue. Especially when you are doing business in South-East Asia.

Other kinds of barriers must be taken into consideration. The most basic protection is probably afforded by physical barriersstore the secret information in an undisclosed physical location that only some employees have access to.

Physical barriers can seem outdated now, and they probably are when it comes to documents (who doesn’t store them on a computer nowadays?). However, they are still relevant when you admit potential partners, or indeed visitors in general, to your premises. Make sure that they cannot take pictures of your innovative products and have them sign non-disclosure agreements (NDAs).

Technical barriers are the most relevant against cybercrime in general and cyber theft in particular. They consist of various information technology (IT) systems that safely store your secrets. They can be expensive, but, as the experts stress, the lack of adequate protection is exactly what makes SMEs the perfect prey for cyber-attacks. There are some basic steps you can implement yourself, from a good password system to basic encryption. However, it’s even more important to develop an IT strategy (for example, you should make it impossible for documents to be shared via the internet or saved on physical devices like USB sticks), possibly with the help of a specialist, and prepare a written technology policy agreement. Make sure that all your employees have read and signed NDAs.

gold-padlock-locking-door-164425Written agreements are among your best weapons when it comes to protecting your trade secrets. Having people sign an NDA will make them conscious of their actions and ensure they think twice before betraying your trust. Having an NDA in place will also make them legally liable for sharing a secret.

When you’re doing business in South-East Asia, it’s of great importance to have your agreements in the local language. This prevents the other party from claiming that they did not understand their confidentiality obligation.

Having a solid NDA in place is not only important for your relationship with your employees and partners (or potential partners), but also for your relationship with your suppliers and subcontractors.

NDAs are essential in a well-drafted trade secret strategy, but they are not the only element of it. Alongside the technology policy agreements already mentioned, a role can be played by non-competition and non-solicitation clauses in employment contracts. These kind of clauses prevent your former employees from using your list of clients in their new position. Singapore and Malaysia are the most favourable countries for these kind of agreements.

You can also upgrade your NDAs, following the Chinese practice you can draft a non-disclosure, non-use, non-circumvention (NNN) agreement. The idea is to bind your counterpart to strict confidentiality. They are not allowed to disseminate the information (as in an NDA), and nor can they use it for their advantage or circumvent the agreement with anticompetitive practices. The idea is to combine secrecy and non-competition elements.

Even in Europe, trade secret thieves can be hard to prosecute due to the difficulty involved with supplying adequate proof. It’s better to put prevention safeguards in place. After all, prevention is better than medicine.

An even higher level of caution needs to be in place when doing business in South-East Asia. Keep in mind that most ASEAN courts tend to favour a local labour force using knowledge acquired in their previous jobs to make a living, without paying too much attention to the fact that the information might be a valuable trade secret belonging to a former employer.

Many countries (such as Brunei and Cambodia) do not have proper protections for trade secrets in place, and in others (like Myanmar), trade secrets are only protected under contract law, so there is no protection without a contractual relationship.

In Indonesia, trade secrets are protected only when an unlawful appropriation can be proven. To prove an unlawful appropriation you have show that there was an NDA in place and that it was breached, or that your IT or physical protections were abused.

At the moment, the law in Thailand imposing registration on trade secrets is suspended. However, if you are doing business in the country, it’s better to keep a very close eye on this.

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Even in countries like Malaysia, Singapore, the Philippines and Vietnam, where relatively sound protections for trade secrets are in place, it can be difficult to protect yourself in the absence of a contract.

To sum up: trade secrets are valuable intangible assets that do not need any registration and potentially last forever. However, you have to learn how to protect your valuable information from cyber thieves, unfaithful partners or greedy former employees.

The first step is to recognise what your secrets are, and then draft your strategy accordingly.

If you have any doubts or questions do not hesitate to reach out to us. The South-East Asia IPR SME HD offers free support to all EU SMEs.

 

Marta Bettinazzi

IP Business Advisor

South-East Asia IPR SME Helpdesk

E: marta.bettinazzi@southeastasia-iprhelpdesk.eu

W: www.southeastasia-iprhelpdesk.eu

 

COVID-19 and overwhelming amounts of counterfeits online: What businesses should do — right away!

Written by Xuan Nguyen

 

According to an update from the World Health Organization (WHO), by 15 April 2020 the coronavirus disease (COVID-19) had already infected 1 918 138 people in 213 countries, territories and areas, resulting in 123 126 deaths. Various governmental interventions have been applied, including border closures, strict quarantines, travel bans, and the forced closure of many businesses. 

It is expected that a deep economic crisis will follow the pandemic (which is still evolving and unpredictable). So far a dramatic slump in economic activities has been witnessed, affecting not only the supply chain (production of goods and services) but also demand (consumption and investment). Many people are forced to stay at home, factories have stopped operating, restaurants, shops and public places are closed. Consumers are being driven toward online shopping marketplaces. While major parts of the world, including, Europe, the USA and a lot of Asia, are struggling to fight against the crisis, in China the situation is now apparently under control and factories are gradually returning to normal.

Photo source: https://pixabay.com

Photo source: https://pixabay.com

The current situation has also created fertile ground for the sale of counterfeit goods online, especially in sudden upsurge sectors such as pharmaceuticals and medical devices. According to Interpol, during one week of action (3–10 March 2020), authorities in 90 participating countries seized more than 4.4 million units of illicit pharmaceuticals, more than 37 000 unauthorised and counterfeit medical devices, and closed down more than 2 500 web links, including websites, social media pages, online marketplaces and online adverts for illicit pharmaceuticals[1].

In South-East Asia all 10 countries have reported a substantive number of COVID-19 cases. Since there was already a high number of local counterfeit manufacturers available, and a significant trade exchange with nearby China, the region is very high risk in terms of counterfeits invading the market. Recently, Thai police seized 45 000 fake COVID-19 test kits, 350 000 medical masks, and 1 200 infrared thermometers that were smuggled into the country by two Chinese men. All products sold online claiming to be COVID-19 test kits at the moment are fake, according to the Thai Food and Drug Administration (FDA)[2].  Vietnamese authorities also found that a company in Vietnam had been making masks out of toilet paper amid the coronavirus outbreak and skyrocketing demand[3].

These figures are just the tip of the iceberg. There are overwhelming numbers of counterfeit products. This article will discuss how counterfeits are being fueled by an online market and what the brand owner should do to mitigate the impact.

Why have counterfeits surged in the shadow of the COVID-19 outbreak?

  • The COVID-19 crisis has resulted in a spike in demand for essential products, such as personal protective devices (facemasks, hand sanitizers and antiviral medication), vitamins, pharmaceuticals, foods and beverages, as well as non-essential products, such as cosmetics and personal care items, household products, electronics, work-from-home tools, entertainment technology and children’s toys. Meanwhile, the majority of factories are being shut down, causing the shortage of supplies of genuine products. ‘In moments of high demand and rushed buying decisions, counterfeiters can jump on the opportunity and sway buyers in their direction[4].’
  • People are shopping online much more than ever. According to analysis by ACI Worldwide, ‘The COVID-19 crisis is driving the global growth of e-commerce sales, with millions of consumers worldwide in quarantine shopping for goods, services and entertainment online. Transaction volumes in most retail sectors have seen a 74 percent rise in March compared to the same period last year.’ The dark side of this phenomenon is that people can be more easily tricked. Many sellers use photos of genuine products while offering extremely low prices to attract online buyers during a time of crisis, and then provide fake products to consumers. It can also create a backlash for brand owners, leading consumers to mistakenly believe the product quality is very low and to lose interest in the brand.
  • The crisis has caused an immediate reduction in the income of many people across the globe, and consumers are looking for the cheapest possible versions of goods because of their reduced budgets. While the pandemic is still evolving, millions of people have lost their jobs following business restrictions and closures. According to a report by the International Labour Organization (ILO), if we are experiencing a ‘“High” scenario where COVID-19 has serious disruptive effects, reducing GDP growth by around 8 percent: Global unemployment would increase by 24.7 million, with an uncertainty ranging from 13 million to 36 million[5].’ Given the current environment of uncertainty and fear, and the real threat of significant declines in income, consumers in many economies are unable to purchase branded goods and services as before; buying cheap counterfeit products can be a tempting option.
  • Many counterfeit suppliers are concentrated in China where the situation is under control and factories have gone back to their normal operations. This means counterfeiters may be in a better position to jump onto the upsurge in demand before legitimate sellers can reopen production. Amid the panic of the crisis, a lot of companies, especially small and medium-sized enterprises (SMEs) are concentrating on solving critical issues such as declines in revenue, insolvencies and job cuts, rather than keeping an eye on monitoring the marketplaces for fakes. As a result of the lack of the legitimate owners’ attention, counterfeiters can more easily flood the market with fakes.
  • Customs checks, market investigations, and raid and seize activities have been reduced following social distancing and safety measures. In the same way as many other public services during this health crisis, officers involved with anti-counterfeiting activities have been physically limited to avoid the risk of infection. This means that infringers have more opportunity to take a free ride on the market.

What should brand owners do?

During volatile market conditions and the resulting increase in online shopping, consumers easily become targets for counterfeiters. Brand owners need to stay on top of monitoring and combating fakes more than ever. Otherwise, they may lose sales to counterfeiters.

  • Focus on monitoring e-commerce and social media platforms and proactively communicate with the customers. During the current social distancing measures and travel bans, a majority of customers has been using the internet for buying stuff instead of shopping physically, you need to keep a close eye to the net to protect your revenue and maintain safe channels for your business during the crisis, and after it ends. When some sectors have a spike in demand while genuine supply chains are being disturbed, fakes become a more serious issue. Brand owners should be more protective about their communications with their consumers, guiding them to available supply channels with authentic products and warning them about fakes.
  • Conduct an investigation and gather facts. Don’t make a groundless claim, it will cost you both time and money. Once you have found a suspected infringement on the internet, the first step is to quickly collect evidence on the infringer, e.g. basic information (name, address, other contact details, the scale of their business and the origin of their products).
  • Take-down Notices and Warning Letters: Utilise the available complaint functions on the e-commerce platforms and encourage social media operators to quickly take down infringing products. In the meantime, as a legitimate brand owner, you can also consider sending Warning Letters to the counterfeiter to ask them to stop their illegal activities.
  • Inform the competent authorities: In South-East Asian countries, local governments have recently made many efforts and improvements in combating online counterfeits. Brand owners can find available complaint tools — such as hotlines, emails or complaint submissions on the websites of customs, market police departments and other relevant national bodies — to promptly notify the authorities.
  • Seek advice from local IP experts. In critical cases, companies are usually advised to consult with local experts that are familiar with infringement cases and have close relations with enforcement bodies such as customs, investigators and the police. It is worth noting that many counterfeits are advertised in local languages or posted on local websites, so monitoring using detection software or search tools (usually in Roman characters) doesn’t work effectively.

The COVID-19 pandemic is unprecedented. Our lives, and the way we do business, have changed in recent weeks. Brand owners should swiftly adapt to the new situation to protect their businesses against counterfeiters. Neglecting this during the crisis might cost you more than you imagine, i.e. from losing your faithful customers to losing your entire share of the market. Keeping your company safe amid the chaos, and getting ready for normal business to resume, is the only way to retain both your revenue and your reputation.

[1] https://www.interpol.int/en/News-and-Events/News/2020/Global-operation-sees-a-rise-in-fake-medical-products-related-to-COVID-19

[2] https://thethaiger.com/coronavirus/big-arrest-on-price-gouging-of-covid-19-safety-gear-and-fake-test-kits

[3] https://www.insider.com/vietnam-company-using-toilet-paper-for-coronavirus-masks-faces-penalty-2020-2

[4] https://www.redpoints.com/pdfs/market-research-impact-of-covid-19-on-ecommerce-sales/?utm_campaign=HS284-market-research-survey-impact-of-covid-9-on-ecommerce-sales&utm_medium=email&_hsmi=84691783&_hsenc=p2ANqtz-_KXO0X8sOU11ZaL9gXi53LxFBQjYdtj-ZtCHwLlocKYxHxgibn05yKKsXyfyIzVAccGKAF&utm_content=84691783&utm_source=hs_automation

[5] https://www.ilo.org/wcmsp5/groups/public/—dgreports/—dcomm/documents/briefingnote/wcms_738753.pdf

EU–Singapore FTA: Highlight of improvements on intellectual property

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WRITTEN BY XUAN NGUYEN

 

Singapore and the EU are key trading partners. The EU is Singapore’s third-largest trading partner in goods, accounting for 10 % of its total trade with the world. Singapore is the EU’s largest trading partner in ASEAN, representing close to a quarter of the total EU–ASEAN trade in goods and over half of the EU–ASEAN trade in services. Over 10 ,000 EU companies are established in Singapore, and use it as a hub to serve the whole South Pacific.

The EU–Singapore trade and investment protection agreements were signed on 19 October 2018. The trade agreement entered into force on 21 November 2019, while the investment protection agreement will enter into force after it has been ratified by all EU Member States according to their own national procedures.

Photo (create by piktochart)

The trade agreement is expected to increase opportunities for cooperation, and foster future growth and progress for all the parties involved. In the immediate future, the companies will benefit from the removal of tariffs and non-tariff barriers to trade in goods and services, the liberalisation of investments and public procurement, and a boost in competition and sustainable development. In addition, the agreement contains important improvements on intellectual property (IP) protection that will contribute to strengthening the position of Singapore as one of the most profitable and secure destinations in Asia for business investment and the expansion of EU companies.

Following a commitment in the agreement, Singapore has strengthened its existing Geographical Indication (GI) protection regime by setting up a system that allows GIs to be registered. The agreement contains one annex with a list of 196 European GIs that will be applying for protection in Singapore. Champagne from France, Parmigiano Reggiano from Italy, and Scotch Whisky from Scotland are some examples of iconic EU GIs to be protected in Singapore. EU GIs will enjoy the same level of protection as in the European Union. In the long run, better protection by Singapore’s authorities will also raise local consumer awareness around authentic, top quality GI products from the EU. As of 1 February 2020, a total of 139 European GIs (mainly covering wines, spirits, foodstuffs, and agricultural products) have been registered in Singapore.

Regarding copyright, the agreement provides for equitable payment for both performers and producers of recorded music played on the radio, TV or in places open to the public (such as shops, restaurants, bars). This will be implemented within two years of the trade agreement entering into force.

The enforcement chapter sets out detailed provisions on civil enforcement measures, including general obligations related to the availability and the application of these measures, provisions on preserving evidence in disputes, injunctions, damages and on the liability of intermediary service providers.

With regard to border enforcement, EU companies can now request that Singapore’s customs seize counterfeit trade mark goods and pirated copyright goods. Within three years from the entry into force of the trade agreement, holders will also be able to request that Singapore’s customs seize counterfeit GI goods and goods with pirated designs when they are being imported or exported.

Singapore and the EU also committed to putting ex officio procedures by the authorities into action. This means that the authorities may act on their own initiative to suspend the release of counterfeit trade mark goods, pirated copyright goods and counterfeit GI goods. With regard to counterfeit GI goods, Singapore will implement this commitment within three years of entry into force of the trade agreement.

The agreement aims at creating favourable conditions and a sustainable environment for EU companies to take full advantage of the opportunity Singapore provides as a business and transport hub in South-East Asia.

Singapore has a very comprehensive and robust IP framework, which is considered to be one of the best in Asia, and the best in South-East Asia. The supplementary commitments on IP protection and enforcement in the agreement will further reinforce Singapore’s competitive position, attracting more investment for innovation and start-up activities from EU companies.

Reference: https://ec.europa.eu/trade/policy/in-focus/eu-singapore-agreement/