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

IP protection in the South-East Asia region: What EU SMEs should know

Why is IP protection important for EU SMEs?

Small and medium-sized enterprises (SMEs) are the backbone of the EU economy. They represent 99 % of all businesses in the EU, account for more than half of Europe’s gross domestic product (GDP) and employ about 100 million people[1]. The positive association between economic performance and ownership of intellectual property rights (IPRs) is particularly strong for SMEs.

World IP Day_1200x675px

SMEs that own IPRs generate 68 % higher revenue per employee than SMEs that do not own any IPRs at all, according to the latest study published in 2021 by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) on IPRs and firm performance in the EU [2]. As the study shows, IPR protection has become crucial to the success of SMEs, and it is thus key for SMEs to be aware of the value of intellectual property (IP) and of the best ways to benefit from it.

IP relates to intangible assets, which comprise intellectual and industrial property. IPRs can be protected by law under patents, trade marks, industrial designs, copyright, plant variety protection, but also via trade secrets, unfair competition, civil and criminal law.

SMEs can benefit from IP protection and seize business opportunities globally if their IP portfolio is managed effectively. A strong IP strategy also helps SMEs attract funds from potential investors, enabling them to internationalise in emerging markets. According to a joint report between the EPO and the EUIPO in 2019[3], IPR-intensive industries generated approximately 45 % of the total GDP in the EU, worth EUR 6.6 trillion. Those sectors also accounted for most of the EU’s trade with the rest of the world, comprising 96 % of goods exported from the EU.

IP protection is also crucial to fostering innovation by providing a return on investment on Research and Development (R&D). Furthermore, a well-prepared IP protection strategy will help SMEs prevent others from free-riding on their IP. Importantly, an SME, being the legitimate owner of IPRs, will have recourse to enforcement actions to stop an activity infringing their IPRs.

IP protection is the key to success of EU SMEs expansion in the SEA region[4]

Southeast Asia (SEA) region is a promising destination for EU SMEs, thanks to their open policies and incentives for attracting foreign investment. The region is a thriving economy with a combined GDP of USD 3 trillion in 2018 (the 5th largest in the world) and a population of 649.1 million people[5].

The SEA region represents the EU’s 3rd largest trading partner outside Europe (after the US and China) with more than EUR 237.3 billion of trade in goods in 2018. The EU is the SEA region’s 2nd largest trading partner after China, accounting for around 14 % of SEA trade. The EU is by far the largest investor in the SEA countries with the Foreign Direct Investment (FDI) stocks in the SEA region accounting for EUR 337 billion[6].

To date, the EU has two Free Trade Agreements already in force with Vietnam and Singapore, respectively – EU-Vietnam Free Trade Agreement (EVFTA) and EU-Singapore Free Trade Agreement (EUSFTA) – and is negotiating a comprehensive economic partnership agreement with Indonesia. These FTAs facilitate market access through the elimination of customs duties and non-tariff barriers from both sides, as well as stimulating investment flows. Each Agreement includes a comprehensive IPR chapter with commitments to enhance IPR protection and enforcement in line with international standards.

The report of the Organization for Economic Co-operation and Development (OECD) and the EUIPO published in 2019[7] shows that companies suffering from counterfeiting and piracy continue to be primarily registered in Europe. China continues to be the biggest origin of counterfeit and pirated goods, but some of the major SEA economies are also listed among the top 25 provenances. As the study shows, the exposure of EU SMEs to IPR infringements in the SEA region is high; and EU SMEs should consider this when preparing their IP strategy.

In the COVID-19 context, IP infringement in the online environment appears to be increasing in SEA countries, via e-commerce and social media platforms, due to the lack of effective regulations addressing online IP violations. IP owners are advised to seek registration for protection of their IPRs in each country of interest. Registration at the IP Offices and in the customs registers may contribute to successful enforcement.

Stay tuned to IP Key South-East Asia and South-East Asia IP SME Helpdesk for success stories of EU SMEs operating in Southeast Asia and how IPR protection supports these businesses during the pandemic.

***

How is the European Union supporting EU SMEs in SEA?

On top of bilateral trade agreements introducing commitments for enhanced IPR protection and enforcement, the EU counts on IP Dialogues and IP technical cooperation programmes to support EU businesses trading and investing in the region, including SMEs.

The European Commission (EC) launched, among others, the following initiatives to support EU SMEs.

South-East Asia IP SME Helpdesk (website here)

The South-East Asia IP SME Helpdesk is an initiative of the EC to support EU SMEs to protect and enforce their IPRs in SEA. All services offered by the Helpdesk are free of charge.

In a nutshell, the Helpdesk’s services cover (i) Enquiry Helpline (tailor-made confidential advice to EU SMEs on IP related to SEA within 3 working days), (ii) IP Guides and Country Factsheets and (iii) Onsite and online Trainings. The South-East Asia IP SME helpdesk is part of the IP SME Helpdesk initiative which EU/COSME SMEs and researchers participating in EU-funded projects both to protect and enforce their Intellectual Property (IP) rights in relation to Europe, China, India, Latin America and South-East Asia.

IP Key South-East Asia (website here)

IP Key South-East Asia (IP Key SEA) is a four-year programme funded by the EU and implemented by the EUIPO aimed at supporting IP rights protection and enforcement across South-East Asia, with a view to creating the appropriate legal and economic environment conducive to trade and investment in the region. By contributing to the enhancement of IP frameworks and implementation of best practices, IP Key SEA aims to ensure a level playing field for both local enterprises and EU stakeholders. IP Key SEA is one of three IP Key flagship programmes that are being implemented by the EUIPO, together with IP Key China and IP Key Latin America.

Other incentives for EU SMEs

EU SMEs now can apply for assistance to protect their IPRs under the following programmes:

  • The Ideas Powered for Business SME Fund: a 20 million Euro grant scheme created to help SMEs develop their IP strategies and protect their IPR, at national and EU level (more details here).
  • Horizon IP Scan: Helping SMEs manage and valorise IP in research and innovation collaborations (more detail here).

#KNOWBEFOREYOUGO

IPR protection in SEA is crucial for EU SMEs to ensure a safe ground for their business activities. Without protection, enforcement of the IP rights will not be possible. Therefore, it is highly advisable for EU SMEs to make an effective use of the various EU initiatives to set up their IP strategy before expanding to the region. Get in touch with the SEA IP SME Helpdesk (question@southeastasia-iprhelpdesk.eu) and IP Key SEA (IPKEY-SEA@euipo.europa.eu) to learn more about the available tools.

Drafted by:

IP Key SEA & South-East Asia IP SME Helpdesk

EN IP Key SEA 1200x675_02                                     

[1]https://ec.europa.eu/growth/smes_en#:~:text=Small%20and%20medium%2Dsized%20enterprises%20(SMEs)%20are%20the%20backbone,every%20sector%20of%20the%20economy.

[2]http://documents.epo.org/projects/babylon/eponet.nsf/0/7120D0280636B3E6C1258673004A8698/$File/ipr_performance_study_en.pdf

[3] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/IPContributionStudy/IPR-intensive_industries_and_economicin_EU/summary/IP_Contribution_Report_092019_execsum_en.pdf

[4] The South-East Asia (SEA) region consists of 10 countries, including Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, the Philippines, Singapore, Thailand, and Viet Nam.

[5] https://www.aseanstats.org/wp-content/uploads/2019/11/ASEAN_Key_Figures_2019.pdf

[6] https://ec.europa.eu/trade/policy/countries-and-regions/regions/asean/

[7] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/reports/trends_in_trade_in_counterfeit_and_pirated_goods/trends_in_trade_in_counterfeit_and_pirated_goods_en.pdf

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/

Online services of intellectual property offices in South-East Asia

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WRITTEN BY XUAN NGUYEN

Digitalisation has changed the way intellectual property (IP) offices operate, and made them more effective. During the Covid-19 pandemic, when many IP offices were physically closed, online systems played an essential role. Thanks to this, filing and processing services avoided disruption.

Photo source: https://pixabay.com

Photo source: https://pixabay.com

Let’s explore how the South-East Asian IP offices improved, and are still improving, their online systems and what type of online services are currently available!

  1. Brunei

To increase efficiency of the services, the Brunei Intellectual Property Office (BruIPO) has recently launched an e-filing portal for patents, trade marks, industrial designs and post-filing. For more information on how the e-filing works, check out here.

There is also an online database (here) that allows companies to search for IP rights such as patents, trade marks and industrial designs which have been registered or applied in Brunei.

  1. Cambodia

Cambodia launched an online filing system for trade mark registration in 2017. Following recent updates to reduce the need for in-person filings during the Covid-19 pandemic, the Department of Intellectual Property (DIP) has urged applicants to make use of the e-filing system as much as possible. The DIP expanded the e-filing system to include post-registration services such as renewals, the submission of affidavits of use/non-use, responses to refusals, and the appointment of a new agent.

To use the system you must create an account with the DIP and also possess a local bank account. It is only open to domestic applicants and registered IP agents. The portal can be accessed here.

In addition, a trade mark search can be conducted online via the Cambodia Trademark Database, here.

  1. Indonesia

The Indonesian Directorate General of Intellectual Property (DGIP) officially launched a new, mandatory e-filing system in 2019. Online filing has been continuously improved and covers almost all aspects of the registration process, from searching or filing to post-filing for patents, trade marks, designs and copyrights. For further information, please click here.

  1. Laos

An online system providing information and services has been developed, it was launched in February 2019 and is now operational. Although the e-filing services are not yet functioning, the trade marks database can be accessed. The Department of Intellectual Property (DIP) has begun to publish the Official Gazette for trade marks and geographical indications (GIs) on a regular basis. Detailed information can be found here.

  1. Malaysia

The Intellectual Property Corporation of Malaysia’s (MyIPO’s) offers online searches and filing services for patents, trade marks, industrial designs and GIs. This system also allows applicants to check the status of their pending IP applications. For more detailed information, please click here.

  1. Myanmar

Myanmar recently launched an e-filing system for trade marks. However, the system can only be used by IP agents. For more details, please click here.

  1. The Philippines

The e-service portal of the Intellectual Property Office of the Philippines (IPOPHL) is very comprehensive. It covers almost all aspects of the process, from searches or filing to post-registration steps for patents, trade marks, designs and copyrights. Further information can be found here.

  1. Singapore

The Intellectual Property Office of Singapore (IPOS) provides comprehensive IP databases. You can use the e-services portal here. It provides effective and comprehensive functions for searching, filing, amending and renewing patents, trade marks and designs. In addition, you can also download the IPOS Go app for on-the-go access to key functions for new trade mark applications, IP renewals (trade marks, patents and designs) and IP searches.

  1. Thailand

The Thai Department of Intellectual Property (DIP) introduced an e-filing system for copyright, patents and trade marks in 2016. The system, however, needs substantial improvements as it is quite unstable, and the e-filing portal is displayed in Thai only (no English version is currently available). For more information, please click here.

  1. Vietnam

The National Office of Intellectual Property of Vietnam (NOIP) launched an Online Public Service portal that covers both filing and post-filing tasks for patents, designs and trade marks. The services are open for both local agents and applicants domiciled in Vietnam. However, the NOIP now only grants account access to applicants who have already been assigned an electronic signature. Check it out here.

Conclusion

The online systems of IP offices in South-East Asia have been hugely improved over the past few years, especially during the Covid-19 pandemic. More improvements are expected in the upcoming years.

Photo source: https://pixabay.com

Photo source: https://pixabay.com

It is worth noting that the online filing systems in South-East Asian countries can only be used by local IP agents or companies with office addresses in the country in question (except for Myanmar where only agents can use the e-filing portal). If a foreign applicant does not reside or carry out their principal business in the country, a local IP agent must be appointed to work with the IP office on their behalf.

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

The South-East Asia 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.

Intellectual property violation in Thailand and the Philippines thriving during Covid-19

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WRITTEN BY XUAN NGUYEN

Due to the social distancing measures imposed during the Covid-19 pandemic, people are massively relying on the internet for both their work and their leisure activities. Online shopping has dominated the market as a result of quarantine and isolation.

The Covid-19 emergency has engendered many challenges for intellectual property (IP) protection thanks to the rocketing increase of counterfeit goods being offered for sale on the internet. This is especially prevalent among products in high demand, such as facemasks, hand sanitisers, antiviral medication, vitamins, pharmaceuticals, foods, beverages, household products, electronics, DIY tools, entertainment technology, etc.

In this article, we present some updated statistics reflecting the alarming rise in IP infringement during the crisis in some South-East Asian countries.

Thailand

According to the latest IP Enforcement Statistics for Thailand, the number of raids and seizures between January and April 2020, compared to the same period in the previous year, has risen acutely (by 31.82% and 1 967.6%, respectively).

Thailand

Philippines

The Intellectual Property Office of the Philippines (IPOPHL) recently published 2019 vs 2020 IP rights violation data showing the dramatic surge in complaints that they received in the first 6 months of 2020 compared to the previous year.

Philippines

Suggestions for protecting your IP during the crisis

  • Proactively monitor e-commerce and social media platforms. As counterfeiters overwhelming use online platforms to sell their products, regularly checking to detect fakes and initiating early interventions will save you a lot of money and time. Online shopping makes payments cashless; this also enables companies to easily track and investigate the sources of fake goods. This is a big advantage when it comes to stamping out counterfeiting.
  • Conduct online trainings and encourage the community to report fakes. Providing trainings to consumers on how to distinguish between authentic products and fake ones, and on where they can buy the real ones, is worthwhile. Companies should also encourage the community to report cases of counterfeiting and make online tools available so people can easily submit complaints.
  • Take-down notices. If you have reliable evidence of counterfeit goods being sold on e-commerce or social media platforms, prepare a take-down notice (with the supporting documents necessary) asking the operators to immediately remove the infringing products.
  • Inform the competent authorities. For larger cases, you can consider to inform the competent authorities to promptly stop the infringement, for example by blocking the importation of the counterfeit goods or by seizing them.
  • Seek advice from local IP experts. It is always advisable to consult local experts with experience in enforcement to be sure you are doing things the right way; in South-East Asia, neither the law nor business practices are the same as in Europe.

 

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