Vietnam: A New Dawn for Vietnam Domain Name Disputes?

shutterstock_167099189Today’s blog post has been kindly drafted for us by South-East Asia IPR SME Helpdesk external IPR expert Mr. Thomas J. Treutler from Tilleke & Gibbins and IPR expert Mr. Loc Xuan Le from T&G Law Firm LLC (TGVN), a licensed law firm and IP agent that partners with Tilleke & Gibbins for local filings in Vietnam. Mr Treutler and Mr. Le discuss the decision by Vietnam Internet Network Information Center to withdraw from the internet domain name registry the domain name www.bmw.com.vn, which had been used by a cyber-squatter. Both experts will also explain the implications of this decision to companies, including European SMEs worried about their internet domain names in Vietnam. This article appeared first in Managing IP Magazine.

April 21, 2017, was an important milestone in the settlement of IP infringement cases relating to “.vn” domain names in Vietnam. This was the day the domain name <www.bmw.com.vn> was withdrawn by the national domain name management agency, the Vietnam Internet Network Information Center (VNNIC), taking control of the domain away from the registrant by “flicking a switch” at the registry. It marked the first time under recently passed legislation that VNNIC had withdrawn a domain name at the request of the intellectual property infringement settlement agency, the Inspectorate of the Ministry of Science and Technology (MOST).

In this case, the BMW Group, owner of the world-famous BMW trademark and many <bmw> domain names, alleged that <www.bmw.com.vn> had been registered, appropriated, and used in bad faith by a cyber-squatter. The domain name had been registered by the infringing party for 12 years and BMW’s earlier attempts to regain the domain name had been unsuccessful.

Continue reading “Vietnam: A New Dawn for Vietnam Domain Name Disputes?” »

How to use the Patent Cooperation Treaty: Focusing on South-East Asia

patent-without backgroundIn today’s blog post we are taking a closer look at how to use the Patent Cooperation Treaty (PCT) when applying for patents in multiple South-East Asian Countries. You will learn what are the benefits of the PCT and what is requested in the international as well as national phases of application. 

What is the PCT?

The Patent Cooperation Treaty (PCT) is a multilateral treaty that was established in Washington in 1970 and is administered by the World Intellectual Property Organisation (WIPO). The treaty makes it possible to obtain simultaneous patent protection for an invention in each PCT Contracting State by filing an international patent application. An application may be filed by a national citizen or a resident of a PCT Contracting State. All European countries, as well as China, are contracting parties to the PCT and in South-East Asia, all nations except for Cambodia and Myanmar are contracting parties.

Filing an international PCT application automatically includes all countries bound by the PCT. The application has the same effect in each country as if a national patent application had been filed with the national patent office. Therefore if an SME wishes to enter into several different South-East Asian markets, it would be time –efficient to file an international PCT application rather than preparing several different applications for individual countries. Continue reading “How to use the Patent Cooperation Treaty: Focusing on South-East Asia” »

IPR Protection in China’s Textile Industry

sweatshirts-428607_1920Two weeks ago we were discussing IP protection in South-East Asia’s textile industry, in today’s blog post we are taking a closer look at the IP protection in China’s textile industry, which is still offering many promising business opportunities to European Businesses. The blog post will offer advice to textile producers, to the producers of yarns and fabrics as well as to the producers of textile machinery. In this blog post you can get further information on trade mark, patent, copyright and trade secret protection. 

China’s textile industry is both an opportunity and threat to European businesses. It is a major market for those supplying production technologies and a key supply base for textiles and finished goods. However, foreign technologies and brands that are not adequately protected often fall victim to infringement by Chinese competitors. This article addresses IP issues across subsectors of the textile industry, including textile machinery, yarns and specialty fabrics, finished fabrics and brand apparel & accessories. The areas of IP most relevant to the above sectors will be discussed, as well as smaller IP issues specifically affecting makers of brand apparel & accessories.

Trade Marks Protect Your Brand

Trade marks provide protection against use of identical or similar marks on similar goods. China uses the ‘first-to-file’ system, meaning that companies may lose legal protection in China and take the risk of infringing others’ trademark if the same or similar mark has already been registered in China by someone else. It currently takes two-three years from application to registration of a trademark in China, providing no opposition is filed against the application upon publication.

Because China uses the ‘first-to-file’ system, it is common for unscrupulous parties to register other’s trade marks first. It can be a difficult and expensive process to cancel, oppose or buy back a trademark that has already been registered. It is not uncommon that import agents or distributors register trade marks on behalf of the principal. It is recommended that the trademark is either registered in the name of the principal or transferred back to the principal to avoid later disputes. In addition to registering the trademark in the original language, it is advisable to register a distinctive Chinese language trademark, even if this is not the primary mark used. Without a well-promoted Chinese mark, the market may create a Chinese nickname for a product, and this nickname may be registered by unscrupulous parties to exploit the reputation of your brand. Continue reading “IPR Protection in China’s Textile Industry” »

Indonesia Joins the Madrid Protocol

shutterstock_56485213More good news for the European SMEs wishing to register their trade mark in South-East Asian countries, as in addition to Thailand, Indonesia has also joined the Madrid Protocol. Today’s blog post explaining Indonesia’a accession to Madrid Protocol has been kindly drafted for us by our South-East Asia IPR SME Helpdesk external expert Ms. Wongrat Ratanaprayul from Tilleke & Gibbins. 

On October 2, 2017, Indonesia’s Ministry of Law and Human Rights submitted its instrument of accession to the Madrid Protocol, making Indonesia the 100th member state under the treaty. As a result, brand owners will be able to seek protection under the Madrid Protocol from January 2, 2018, onwards.

Once the Madrid System comes into force in Indonesia, the owner of an existing International Trademark Registration (IR) will be able to expand the scope of their protection by filing a subsequent designation to its existing IR, in order to seek additional protection in Indonesia. In addition, trademark owners will be able to file an IR in any other member country designating Indonesia, and trademark owners in Indonesia will similarly be able to file an International Trademark Application to seek protection of their trademark in any other member countries.

Indonesia has opted for an 18-month deadline, within which the registrar is obliged to issue a notification of refusal of international registrations. However, in the case where an opposition is raised by a third party, the Directorate General of Intellectual Property may notify the World Intellectual Property Organization of a notification of refusal after the expiry of the 18-month time limit.   Continue reading “Indonesia Joins the Madrid Protocol” »

IP Protection in South-East Asia for the Textile Industry

towels-1511875_1920In today’s blog post, we are taking a closer look at IP protection in South-East Asia’s  textile industry, which is developing fast and offering many opportunities to European SMEs. You will learn how to protect your newest fabrics, your textile machinery or your brand in South-East Asia. 

Textile industry in South-East Asia offers many promising business opportunities to European SMEs as garments are one of ASEAN’s largest export articles and textile industry is still growing in the majority of South-East Asian countries with fastest growth rates registered in Vietnam and Cambodia. Furthermore, Thailand that has traditionally been strong in textile manufacturing has now set its sights on becoming a fashion hub for the ASEAN region as its textile and garment exports to other ASEAN countries have been steadily growing for the past few years. Similarly, Indonesian government is committed to preparing several incentives in a bid to boost the textile sector and making Indonesia one of the top five global textile exporters.[1]

South-East Asia has been the production hub for many European companies that would then export apparel and accessories back to the European Market. At the same time South-East Asia also offers market opportunities for European products as European design is becoming more well-known in the region.  Singapore for example has become Asia’s second fashion capital, offering a variety of high-end international brands.[2] As Asian consumers are becoming more affluent and cities like Bangkok or Kuala Lumpur are becoming more established in the fashion world, there will be more opportunities to European SMEs in the region.

At the same time, South-East Asia’s textile industry is both an opportunity and threat to European businesses. It can be a major market for those supplying production technologies and on one of the key supply bases for textiles and finished goods. However, foreign technologies and brands that are not adequately protected often fall victim to counterfeiting and other IP violations that are still commonplace throughout the whole South-East Asia. Continue reading “IP Protection in South-East Asia for the Textile Industry” »