Using Customs to Fight Counterfeiting in Singapore: A Case Study

Posted on 2-May-2017 by Helika Jurgenson

The 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 Marks in China: Q&A for the International Comparative Legal Guide to Trade Marks 2017

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Posted on 14-Apr-2017 by Helika Jurgenson

For any EU SME operating in China, Trade Marks will be an important IP asset to have. So in order to meet any questions you might have, our China IPR SME Helpdesk expert Mr. Charles Feng from East & Concord Partners based in Beijing has kindly drafted for us a very useful and informative blog post on Trade Mark Protection in China. In this comprehensive Trade Mark guide, our Q&A with Mr. Feng will give you all the answers you need on Trade Mark protection in China.

1 Relevant Authorities and Legislation

1.1 What is the relevant trade mark authority in your jurisdiction?

The Trademark Office (“TMO”), which is affiliated with the State Administration for Industry and Commerce, is the authorised government agency in charge of trademark administration including examinations of trademark applications, oppositions as well as the cancellation of trademark registrations for three years of non-use. The Trademark Review and Adjudication Board (“TRAB”) oversees the examination of various applications for appeals against the TMO’s decisions, as well as trademark invalidation matters.

In addition, local Administrations for Industry and Commerce (“AICs”) or Market Supervision Administrations (“MSAs”) are in charge of the administrative enforcement of trademark rights.

People’s Courts have jurisdiction over trials for trademark-related administrative or civil litigation.

1.2 What is the relevant trade mark legislation in your jurisdiction?

The most fundamental legislations include the Trademark Law of the People’s Republic of China (“PRC Trademark Law”), the Implementing Regulations of the PRC Trademark Law as well as multiple Judicial Interpretations related to trademark law which are issued by the Supreme People’s Court.

In addition, the Anti-Unfair Competition Law of PRC provides protection to unregistered marks such as distinctive names, packaging or decoration of famous goods. The criminal code provides protection against counterfeiting activities where the illegal turnover exceeds a certain amount.

Continue reading “Trade Marks in China: Q&A for the International Comparative Legal Guide to Trade Marks 2017” »

Trade Fairs in Thailand: Steps to Protect your IP

Posted on 28-Mar-2017 by Helika Jurgenson

Trade fairs are an excellent place for European SMEs to introduce their products to South-East Asia and to find suitable business partners, buyers or distributors. With the arrival of the spring there are be many opportunities for European SMEs to participate at various trade fairs in South-East Asia and in Thailand in particular. SMEs planning to participate in trade fairs in Thailand should, however, keep in mind that trade fairs are also excellent places for malicious entities to find ideas to copy. Therefore, European SMEs should have the full knowledge of how they could protect their business against infringements of their IP rights at trade fairs. Thus in today’s blog post we have chosen to discuss how companies could protect their IP when visiting trade fairs in Thailand.

Trade fairs are now a well-established part of the business calendar in Thailand, particularly in Bangkok, with a number of high-tech industries represented, as well as areas of the creative sector such as furniture and design. Trade fairs provide foreign businesses with the opportunity to present their innovations and ideas to potential business partners and customers, and allow them to learn from and collaborate with other innovators. There is, however, a risk, in that disclosing your innovations to the public leaves you exposed to other copying and infringement of your IP.

Infringement of innovations may not necessarily be straightforward ‘counterfeiting’ – i.e. exact product, packaging and brand imitation. It is more likely that competitors could be using, intentionally or otherwise, a certain part of your product or innovation. It is therefore advisable to be as diligent as possible and to get to know competitors’ products well. Given this, a practical and realistic approach must be taken when preparing for and attending trade fairs in Thailand. IP owners must also be patient and pragmatic, as it is unlikely that immediate action can be taken against an infringer. There are, however, steps that IP owners can take before, during and after the event to best protect their IP. Continue reading “Trade Fairs in Thailand: Steps to Protect your IP” »

How to Secure Effective Evidence at Trade Fairs in China

Posted on 15-Mar-2017 by Helika Jurgenson

Trade fairs are a great place for European SMEs to introduce their products to China and to find suitable business partners. With the coming spring there will be many opportunities for European SMEs to participate at various trade fairs in China. SMEs planning to participate in trade fairs should however have the full knowledge of what to do if they happen to find infringing products at trade fairs, in order to be able to protect their business. Thus in today’s blog post we have chosen to discuss how to effectively secure evidence at trade fairs in China.

For companies considering moving into international markets, trade fairs are a key channel to introduce their product to the new market, expand visibility and customer base and seek partners for manufacturing, distribution and retail.For many European SMEs, exhibiting at a major trade fair in China may be the first step towards internationalisation. However, as well as providing business opportunities, trade fairs also pose risks for exhibitors by exposing new products, technology, designs and brands to those who would copy the efforts of others for their own financial gain. In many ways a trade fair can be viewed as a supermarket for local counterfeiters looking for the next great product to copy or brand to appropriate, often to be sold at the same fair that the original product developer would like to exhibit.

Examples of typical infringements found at trade fairs include:

Displaying and selling counterfeit products bearing the trade mark(s) identical or similar to others’ registered trade mark(s);
Displaying and selling the products counterfeiting other’s patent rights;
Utilising others’ copyrighted images, texts in the advertisement and/or company brochure and/or product catalogue;
Copying others’ products’ design;
Copying the design of another’s exhibition booth.

Why is collecting evidence important?

Evidence is needed for IPR enforcement. No matter which enforcement action is best suited for the company, the European SME will need to prove that its IPR have been infringed by producing a significant volume of evidence. In China’s People’s Court the burden of proof lies with the plaintiff (claimant) and documentary evidence is far stronger than witness testimony. As well as proving ownership via IPR certificates SMEs must prove the infringement via physical evidence including contracts, photographs of infringing products and proof of sale which have been validated by a notary public (a public officer or other person who is authorised to authenticate documents, evidence etc). If SMEs wish to seek assistance from an administrative body (e.g. the State Administration for Industry and Commerce (SAIC) for trade marks) they must provide a similar body of evidence for the case to be accepted. Continue reading “How to Secure Effective Evidence at Trade Fairs in China” »

Using Contracts to Protect your IP in South-East Asia: Licensing and Technology Transfer Agreements

Posted on 6-Mar-2017 by Helika Jurgenson

Many companies wishing to do business in South-East Asia choose to license their IP to third parties in order to be able to expand their business ever more rapidly and conveniently. Well-drafted licensing and technology transfer agreements are the key to a successful business endeavor in South-East Asia and thus, we have chosen to discuss the art of drafting these contracts in today’s blog post. This blog post will provide you with some useful tips and watch-outs to keep in mind when drafting contracts with your partners in South-East Asia.

IP can create value and revenue to the European SMEs through IP commercialization via licensing the IP to third parties. A company that owns rights in a patent, but cannot or does not want to be involved in the manufacturing of products, can benefit from licensing their IP assets to third parties who have better manufacturing capacity, wider distribution outlets or greater local knowledge. Furthermore, licensing trade marks can allow companies to expand their operations into new markets faster and more effectively as the companies can benefit from the wider distribution networks and contacts that the licensees have.

The people and companies that SMEs do business with, and therefore contract with, will often use the European SMEs IP to varying degrees. Therefore, it is also very important for the European SMEs to protect their IP well-written licensing and technology transfer contracts. In this article we will take a look at licensing and technology transfer agreements. Continue reading “Using Contracts to Protect your IP in South-East Asia: Licensing and Technology Transfer Agreements” »

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