How to Protect Trade Secrets in China: a Case Study

fgjMore and more European companies are considering bringing their cutting-edge technology to China, as the market offers many promising opportunities for European high tech companies. However, despite the fact that Chinese IP regime has improved a lot, IP infringements are still commonplace in China and, thus, European SMEs, wishing to successfully  do business in China, need to consider all the possibilities of how to protect their IP in China. Today’s blog post explores the often neglected, but a very useful  way of protecting IP in China – the trade secrets.

Nearly all businesses in all industries and sectors possess trade secrets. Trade secrets are a valuable and highly useful form of intellectual property that are nevertheless often undervalued and overlooked by their owners. This is not least the case in the service sector where the relative value of trade secrets as intangible assets can be extremely high. For example, a logistics firm may not hold any patents or few trade marks and substantial copyrights, but the value of its operations could heavily derive from information contained within client lists and standard procedures.

A considerable advantage for trade secrets is that unlike some other forms of IP rights, such as patents and copyrights that have a finite term, trade secrets can theoretically enjoy an infinite term of protection so long as the trade secret remains just that – a secret. The main difference between protecting something by patent or as a trade secret is that, while technical information is publicly disclosed in patents, it is kept away from the public eye in trade secrets. A trade secret can last forever as long as the confidentiality measures that protect it continue to work. An invention patent typically expires after 20 years.

On the other hand, legal protection of trade secrets is easily lost. Once the information becomes public information, it no longer enjoys any legal protection. As a result, prevention is the golden rule when it comes to protecting your trade secrets, because once your secret is out, there is usually very little that you can do about it. China, like most other countries, provides a legal framework for the protection for trade secrets, and the law provides for remedies in the event that your trade secrets are unlawfully disclosed. Continue reading “How to Protect Trade Secrets in China: a Case Study” »

Patent Protection Case Study: The Importance of a Robust IP Enforcement Strategy

shutterstock_166598477_blueEnforcing your patent rights in China could oftentimes be challenging as counterfeiters are also getting smarter and more innovative over time. However, if a European SME has a good IP enforcement strategy in place, it is possible to successfully defend your business against patent infringers. In today’s blog post we are taking a look at a case study involving a Spanish SMEs that experienced some issues with patent infringements. This case study shows the importance of a good IP enforcement strategy for the business success.

Case Background 

A Spanish SME in the scientific research and development industry has patents around the world and in China on certain cutting edge surgical instruments. At an international exposition of surgical instruments the Spanish Company discovers a Chinese company advertising their patented products under the name of the Chinese company. The Spanish company obtains flyers and photos of the products. However, the Spanish company is also concerned that the Chinese company might have defensive utility model patents in place. Since, utility model patents are approved quickly (usually within one year) and do require official examination on novelty, inventiveness and industrial applicability, this could potentially bar the Spanish company from entering the Chinese market. Continue reading “Patent Protection Case Study: The Importance of a Robust IP Enforcement Strategy” »

Trade Mark Revocation in Singapore: A Case Study

tmEuropean SMEs who have fallen victims to bad faith trade mark registration in Singapore and elsewhere in South-East Asia have some opportunities of getting their trade mark back without having to pay a lot of ‘ransom’ money. If the unscrupulous company who registered the trade mark in bad faith  does not put the trade mark into genuine use, European SMEs could initiate a trade mark revocation process. in today’s blog post we are taking a look at the process of trade mark revocation in Singapore by analyzing an interesting case study.  

Trade Mark Protection in Singapore

Registered trade marks enjoy statutory protection in Singapore under the Singapore Trade Marks Act, which also recognizes three-dimensional signs (shapes) and sounds as trade marks, however trade marks based on taste and smell are not yet recognized and not registrable in Singapore. Singapore operates under a ‘first-to-file’ system meaning that the first company to register the trade mark will own the trade mark irrespective of the first use. This means that early application for trade marks, ideally before the release of products and services into Singaporean market is recommended.

Applications for trade mark registration in Singapore can be submitted in English to the Intellectual Property Office of Singapore (IPOS) and the application fee is 341 SGD (228 EUR) if the application is filed online. IPOS will assess the application to ensure that all formalities are met before conducting the relevant searches and examination to ensure that the mark applied for is registrable. Once this is completed, the application will be published and, provided no oppositions are filed against the application within two months of publication, the trade mark will proceed to registration. Once registered, statutory protection for registered marks can last indefinitely, although renewal applications must be filed every ten years. Continue reading “Trade Mark Revocation in Singapore: A Case Study” »

Trade Mark Protection in Myanmar: A Case Study

imageedit_1_8961851529In today’s blog post we are taking a look at the trade mark protection in Myanmar, a country that is in the process of modernizing its IP laws. Even though  Myanmar has published a new Draft Trade Mark Law back in 2015, the law has still not yet come to force and in the meantime EU SMEs still  need to protect their IP in Myanmar. This blog post offers some advice on how to protect your trade mark and the design of your package in Myanmar by focusing on a recent case study. 

Trade Mark Regime in Myanmar

Compared to other South-East Asian countries, Myanmar currently has the weakest IP laws and regulations in place. Myanmar is not yet a signatory of any multilateral trade mark treaty. However, in accordance with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) , to which it has acceded, Myanmar is required to implement and comply with Articles 1-12, Article 19 of the Paris Convention and the terms of TRIPS by no later than 1st July 2021. Myanmar is now in the process of drafting several IP laws

Currently, there is still neither a particular statute nor law on trade marks, nor specific provisions regarding the registration of trade marks in Myanmar. However, the Penal Code of Myanmar defines a trade mark as “a mark used for denoting that goods are the manufactured merchandise of a particular person”. Likewise, the Private Industrial Enterprise Law provides that “a business is not allowed to distribute or sell its goods without trademark”. At present, foreign companies doing business in Myanmar have been relying on these laws to enforce their IP rights relating to trade mark. Continue reading “Trade Mark Protection in Myanmar: A Case Study” »

IPR Protection in China for the Medical Device Industry: Case Study

pharma-sectorIn today’s blog post we will take a look at a case study from the medical device industry in order to explore how important it is to register and obtain IP rights in China before starting to do business in or with China. The case study will also show that persistent IP enforcement is one of the key factors to IP protection and business success in China. 

Background of the Case

A European company in the dental instruments sector was selling their product in China through a Chinese distributor. They discovered a competitor in China was offering a similar, but lower-specification product, using an identical exterior design, colour scheme, and control interface. The technical manual, diagrams and parts of their brochure appeared in part to be directly copied from the original. Overall, the competitor’s product gave the appearance of being similar in function to that of the European company, although its performance level and price were much lower. Continue reading “IPR Protection in China for the Medical Device Industry: Case Study” »