Who owns the ‘selfie stick’? How to protect your IP in South-East Asia

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Copyright: Chetan Kolluri

Love it or hate it, the selfie stick is here to stay (at least temporarily). The extendable pole, with a handle at one end and a smartphone or camera attachment at the other, was nominated by TIME Magazine as 2014’s top invention, and the word ‘selfie’ was entered into the Oxford English Dictionary in the same year.[1] According to Bloomberg, more than 100,000 of the extendable ‘narcissticks’ were sold in the US in December 2014 alone.[2] Amazon figures substantiate Bloomberg’s claims, demonstrating a 301% increase in selfie stick sales between September and November 2014.[3]

But who holds claim to this celebrated invention?

Although Anindito Respati Giyardani, an Indonesian citizen, claims to be the inventor of the selfie stick (popularly referred to the ‘tongsis’ or ‘narcissistic stick’ in Indonesia), according to Andrew Conduit at SKC Law in Indonesia, this may not actually be the case. Giyardani apparently applied to register the patent in the US in 2012, but acknowledges that two other US patent applications for selfie-stick inventions pre-date his.[4][5]

Seven years prior to Giyardani’s application, Wayne Fromm, a Canadian inventor, filed his US patent for a similar device, and another was patented as early as 1985. Fromm’s patent, which remains largely unchallenged, is unusual. It does not prevent the sales of other selfie sticks on the US market – it is likely too late for Fromm to contest this today. Furthermore, potential trade marks on the terms ‘selfie’ and ‘selfie stick’ would be virtually impossible now that the expressions are so widely used. Had the inventor of these terms registered the trade marks at the beginning, the words might now be trade mark protected, like the genericised terms ‘Hoover’, ‘Aspirin’ or ‘App.’[6].

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Copyright: SKC Law

Why should an SME register their Intellectual Property Rights (IPR)?

South-East Asia is a huge and growing market. As a single entity, it ranks as the seventh-largest economy in the world, accounting for approximately EUR 1.7 trillion and over 600 million people.[7]

IP rights offer exclusive rights over trade marks, patents and designs (among others), and a competitive advantage for European small and medium-size enterprises (SMEs) over their competitors. Since South-East Asia generally adopts a first-to-file system (where the first person to file an application is granted the right to the property in the country where it is registered), no registration means no right. This is largely the same for patents and designs. If an SME does not register their intellectual property in South-East Asia, they stand to lose their competitive advantage over other companies selling similar products, and potential revenue generating opportunities that would increase their profit margin.[8]

10 ways to protect your IPR in South-East Asia

  • Identify your IP assets: It is crucial to understand the aspects of your business that constitute IP and identify accordingly their assets value before entering the South-East Asian (or any) market.
  • Link IP strategy to business objectives: Precisely identify which of your IP assets will be essential to achieving your business objectives.
  • Prioritise your protection needs:  Assets that generate the most revenue or generate the most exposure (like the term ‘selfie stick’) should be given the highest priority. You should aim to register these before you even enter the market that you intend to conduct business in.
  • Think about online protection: Online protection, especially of domain names and social media identities, merits particular attention, as the internet is an ideal place to set counterfeit products and commit fraud.
  • Know the local rules: Knowledge of, and the ability to adapt to international rules can maximise the effectiveness of IP protection and avoid problems further down the line.
  • Register your IP rights: Registered rights are always easier to enforce than nonregistered rights.
  • Protect your trade secrets: Always protect trade secrets by means of confidentiality agreements with employees, suppliers, potential partners and contractors.
  • Establish key contracts: Business owners can protect IP assets and avoid legal problems by adequately and properly protecting IP rights through agreements and contractual provisions.
  • Investigate potential for licensing of IP: Licensing is one of the cheapest and safest ways to exploit IP and can provide SMEs with a powerful presence in a market that is unknown to them.
  • Seek professional guidance: Seek local counsel for legal opinions, recommendations, vulnerability, audits and studies that allow IP rights holders to make informed decisions.

See our guide on the Top 20 IP considerations when entering a new market here, and Andrew Conduit’s IP blog here.

[1] http://www.lexology.com/library/detail.aspx?g=a40b425e-5a39-41fc-b27d-6e6e95e262ab

[2] http://www.bloomberg.com/news/articles/2014-12-31/selfie-sticks-rule-holiday-season-as-musthave-accessory

[3] http://www.cityam.com/206530/selfie-stick-short-history-years-most-popular-christmas-present

[4] http://skclaw.blogspot.de/2015/06/myth-buster-selfie-stick.html

[5] http://www.jpnn.com/read/2014/07/08/244945/Anindito-Respati-Giyardani-Penemu-Tongkat-Narsis-alias-Tongsis/page3

[6] http://www.lexology.com/library/detail.aspx?g=a40b425e-5a39-41fc-b27d-6e6e95e262ab

[7] http://www.inboundlogistics.com/cms/article/southeast-asia-region-on-the-rise/

[8] See the interview with our IP Expert, Andrew Conduit, for more information: http://youtu.be/1yubb6Zn7Zs

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