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

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

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

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

IP Considerations in Singapore for the Booming ICT Industry

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Information & Communication Technology industry is a key pillar of Singapore’s economy as the country has positioned itself as an ICT hub for South-East Asia; it is in fact a regional base for known multinationals such as Microsoft, Oracle, Amazon Web, Google, Twitter as well as various other international technology start-up companies.singapore-2393073_1920[1] Given the Government’s recent push to transform Singapore into a Smart Nation, the country is expected to offer many promising business opportunities to European SMEs, whose expertise and top-notch technology are highly sought after.

European SMEs engaged in cyber security technologies and services can benefit from the increased investments in cyber security as Singapore’s economy continues its progress on digitization. SMEs with products, technologies and solutions in the areas of: big data, cloud computing, internet of things, ICT and sustainability, communications of the future, social media, new digital economy and user interfaces; are also expected to find promising business opportunities in Singapore over the next 3 to 5 years, as these areas will receive the lion’s share of investments in the ICT sector.[2]

European ICT companies should, however, pay attention to protecting their IP, because IP infringements still exist in Singapore. Well-managed IP is often a key factor for business success and neglecting to register IP rights in Singapore could easily end SMEs’ business endeavor in the country. Thus, a comprehensive IPR strategy is needed, when entering Singapore’s market.

Apply for patents to protect your inventions

ICT companies, wishing to market new inventions in Singapore, should consider applying for patents, because patent owners acquire, for a fixed period, the exclusive right to prevent others from using, commercializing or importing the patented inventions. It should also be kept in mid that patent rights are territorial, meaning that patents granted in Europe are not protected or recognized in Singapore.

Unlike most countries in South-East, in Singapore there is only one official type of patent – standard invention patent. In order to obtain a standard invention patent, an invention must satisfy the criteria of showing ‘novelty’, having an ‘inventive step’ and ‘industrial applicability’. Invention patents are valid for 20 years after the filing date and it usually takes from 1 to 4 years to obtain a patent. Because of the relatively long duration to obtain it, patents are most suitable for the ICT products with longer life-cycles.

Singapore is a member of the Paris Convention and the Patent Cooperation Treaty (PCT), which means that applicants for patents are entitled to a ‘right of priority’ (i.e. the same filing date the original application made in the home country can be used in Singapore), if the same filing is made in Singapore within 12 months from the first filing in any other country that also belongs to the Paris Convention. When using the PCT Route, the same filing must be made in Singapore within 30 months from the first filed application.

In Singapore, integrated circuit layout designs are also protected under the patent laws and regulations. As integrated circuits play central role in the ICT industry, SMEs focused on R&D might also want to protect their integrated circuit layout designs. Integrated circuit layout designs are protected for a duration of 10 years if they are first used commercially within five years of creation. In any other case, they are protected for 15 years from the date of creation. Similarly to patents, integrated circuit layout design protection also functions under the ‘first-to-file system’ and thus it is essential to apply for these rights already before entering Singapore’s market.

Registered designs protect the appearance of your product

Registered designs are increasingly used in the ICT industry to protect the appearance of products, like smart phones, tablets, and media players. Registered designs protect the aesthetic aspects of products, but not their functionalities.

To qualify for registration, designs must be ‘new’ (i.e. not yet published or disclosed to the public) at the time of the application. Therefore, SMEs should ensure that their design is not disclosed to others unless an application has been filed. Designs must also be industrially applicable.

SMEs should keep in mind that registered designs also function under a ‘first-to-file’ system. This means that if someone files an application on the design first, any similar or identical registered design which European SMEs wish to obtain will be in danger of being revoked for lack of ‘novelty’. It is therefore advisable to make applications as early as possible.

Good news for the ICT companies is that, in Singapore, unlike in many other South-East Asian countries, it is also possible to apply for a registered design that covers the Graphical User Interface (GUI). Given the central role of GUIs in ICT sector and the fierce competition on Singapore’s ICT market, it is important that GUI owners apply for the design patent in order to protect their inventions.

In Singapore, one of the requirements to obtain registered design for the GUI is industrial applicability. In order to satisfy this, GUIs must be applied to an article by any industrial process. Meaning that when applying for a registered design for the GUI, the applicant also needs to indicate the article that the GUI is applied to (e.g. the smartphone). As to the designs for products with GUIs, the applicant should submit drawings or photographs that clearly depict the design for which protection is sought. Therefore, the drawings or photographs submitted should contain the view(s) of the overall product indicating the location of the GUI.

Copyright protects the expression of SMEs’ ideas

Since the ICT sector features cumulative innovations with short product cycles, SMEs may wish to also take advantage of other IP rights, such as copyrights. One of the main values of copyright protection is simplicity, as copyright protection arises automatically as soon as the work is created. However, copyright protection extends only to expressions of ideas, and not to ideas per se.

In Singapore, works that qualify for copyright protection under the Copyright Act do not need to be registered in the country as copyright protection is conferred automatically to the author as soon as the creative work is expressed or fixed in a material form from which it is then capable of being reproduced. Copyright is protected for 70 years from the year in which the author died. What matters most to the ICT companies, is that source codes of computer programs are also protected under the copyright law in Singapore. In case of a copyright, however, it is wise to clearly determine the ownership, as without evidence to the contrary, the person or entity whose name appears on the work will be deemed the copyright owner of the work.

Guard your Trade Secrets

The importance of trade secret protection cannot be overemphasized in high-tech companies. By protecting trade secrets, most businesses can take advantage of the lead time, meaning the ability to commercialize the innovation well ahead of competitors, so that substantial revenue can be captured before copycats are introduced in the market. This is especially helpful for companies with products that are expected to have a short run in the market like many ICT products.

Trade secrets are protected under Singaporean law, however, the trade secret must be ‘confidential’, meaning that the information is not freely available in the public domain. In cases of infringement, SMEs must also be able to prove that an obligation of confidence was clearly stated during dealings with third parties, such as by signing nondisclosure agreements or having a confidentiality clause within their agreements with other parties. Without the proof that third parties were aware of the obligation of confidentiality, trade secret enforcement would be impossible.

SMEs, wishing to relay on trade secrets to protect their top-notch technology, should include confidentiality clauses within employee contracts covering not only the duration of employment, but if possible, even after the employee has left. It should also be of paramount importance to ensure that confidentiality agreements are signed with business partners whenever disclosing confidential information.

Don’t Forget to Protect your Brand

Considering that ICT products tend to have shorter product cycles, and at the same time, improvements are added at a consistent pace, SMEs will benefit from consistent branding. Since there is a strong interaction and interoperability among ICT products in the market, having a consistent source identifier would be useful to drive business value. Along with the branding strategy, it is essential to undertake the protection of such brands through trade mark registration.

Like patents and registered designs, trade mark registration also functions under the ‘first-to-file’ rule in Singapore and early applications for trade marks, ideally before the release of products into the market, is recommended.

Although unregistered trade marks may still be protected under the common law tort of ‘passing off’ in Singapore, registration is highly recommended for a more straight forward and comprehensive protection. The law of ‘passing off’ essentially prevents other traders from unfairly benefiting from the goodwill that that has been built up by a trader. Three factors need to be proved before a claim of passing off can succeed:

  • That the original user of the mark has established goodwill for the trade mark within Singapore;
  • That the defendant’s conduct has lead the public to believe that his goods or services are goods or services of the plaintiff (this is usually referred to as the Misrepresentation element); and
  • As a result of the misrepresentation, the original user has suffered damage.

 

Since the legal remedies available in such a case are more limited than if the mark had been registered, it is advisable for the European SMEs to register their trade mark in Singapore. Trade marks are registered with the Intellectual Property Office of Singapore (IPOS) and it usually takes 6 to 9 months to register a trade mark in Singapore if no opposition is presented.

Helika Jurgenson

SEA IPR

South-East Asia IPR SME Helpdesk

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/.

[1] EU Gateway Business Avenues in South-East Asia: https://www.eu-gateway.eu/sites/default/files/collections/document/file/information-and-communication-technologies-asean.pdf

[2] Ibid

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

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

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

How does Customs Protection Work

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

Using Customs to Fight Counterfeiting in Singapore: A Case Study

shutterstock_118547785The Customs can often work as the first line of defense, when companies are dealing with counterfeiters. However, not many SMEs are aware of the different cooperation opportunities with the customs. Thus, today’s blog post focuses on how the SMEs can use the customs in order to protect their IP in Singapore, one of the busiest ports in the  world. In order to give practical advice , the blog-post discusses a case-study on customs cooperation in Singapore. 

Singapore’s port is one of the world’s busiest ports and therefore a major transit point for imports and exports between Europe and Asia. EU exporters in a number of sectors have set up distribution centers in Singapore’s harbor from where they serve the wider region. As Singapore’s port is a major transport hub, it is also at high risk of shipments of counterfeits. To promote vigilance and bolster the safety and security of trade, the EU-Singapore Free Trade Agreement (ESFTA) contains provisions to strengthen cooperation in the field of Customs. In particular, the ESFTA will facilitate the granting of assistance based on reasonable suspicion of an operation being in breach of customs legislation and will promote greater exchange of information between authorities.

European SMEs can liaise with Customs to fight against counterfeiting of their products. The Singapore Customs is a governmental agency of the Ministry of Finance and their objective is the implementation of customs and trade enforcement measures including the checking and detainment of suspected infringing goods crossing the border. The Singapore Customs has the authority to detain imports, exports and re-exports of IPR- infringing goods. Continue reading “Using Customs to Fight Counterfeiting in Singapore: A Case Study” »

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” »