The 2016 Amendment to Thailand’s Trademark Act – Its Changes, Significance, and Consequences

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trademarkThailand has issued new amendments to its Trademark Act, which will enter into force in the end of July, this year. In order to  allow you to familiarize yourselves with the upcoming changes, our IPR SME Helpdesk expert Mr. Franck Fougere from Ananda Intellectual Property has kindly drafted for us a blog post explaining the amendments to the Trademark Act and discussing their significance for the SMEs.

The widely forecasted amendment to Thailand’s Trademark Act of B.E. 2534 (1991 A.D) will become effective on July 28, 2016. Significant structural policy changes will include Thailand’s ratification of the Madrid Protocol and acceptance of sound marks for registration. Several other changes to be introduced via the Amendment will affect the mechanics of trademark registration and prosecution, and, thus, intellectual property (IP) strategy. Anticipated changes to the registration and prosecution process are discussed below. Continue reading “The 2016 Amendment to Thailand’s Trademark Act – Its Changes, Significance, and Consequences” »

Bad Faith Trade Mark Registrations in China

Prior trade mark registrations, also called ‘bad-faith registrations’, are a significant problem that many European companies encounter in China. This process commonly involves a Chinese company first registering the trade mark of a foreign company in China with the express intention of selling it back to the foreign company at an inflated price. Finding out that a Chinese company has registered a bad faith trade mark is one of the biggest complaints of European Small and Medium Enterprises (SMEs) trying to enter the Chinese market. These prior registrations can limit the foreign company’s freedom to operate by restricting its ability to enter the China market or even to source goods from China.

As an example, a Scandinavian SME used a Chinese factory to make its goods for export. The Chinese supplier registered the Scandinavian company’s trade mark in China and engaged China’s customs to intercept export goods bearing the trade mark, thereby disrupting the Scandinavian company’s business. Continue reading “Bad Faith Trade Mark Registrations in China” »

Top 3 IPR mistakes for SMEs in South-East Asia

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shutterstock_182269964A wide range of foreign industries are now looking to Southeast Asia not just to take advantage of an abundance of cheap labour for exportables, but also to tap into new consumer markets formed from a growing middle-class population. While these opportunities can lead to substantial returns for European businesses, via both the production and sales side, the less developed nature of business-related legislation means the dangers of intellectual property (IP) infringement are often great.

There are very few SMEs who would not take the issue of intellectual property rights (IPR) seriously in their business strategies, nevertheless there are some issues that are commonly overlooked and can even lead to commercial disaster. Here we take a look, in no particular order, at the top 3 IPR mistakes SMEs make… Continue reading “Top 3 IPR mistakes for SMEs in South-East Asia” »

South-East Asia IPR Basics Series: Trade Secrets in Malaysia

IP TheftIn Malaysia, no pure information can be considered property. However, as a party to TRIPS and other agreements, Malaysia does have laws which prevent the unauthorised disclosure of information. This information is commonly referred to as “trade secrets,” although it is called “confidential information” in Malaysian law. This definition means that trade secrets cannot be proactively registered, but can form the basis of action taken against others. Confidential information in Malaysia can also take the form of virtually any other confidential information which was secret and protected by contractual agreements.

Continue reading “South-East Asia IPR Basics Series: Trade Secrets in Malaysia” »

South-East Asia IPR Basics Series: Patents and Utility Models in Malaysia

In Malaysia, as iPatentsn Europe, a patent is an invention that is new, involves an inventive step, and is industrially applicable. Essentially, a patent is what you use to protect inventions—creative and novel solutions to technical problems. The Patent Division of the Malaysia Intellectual Property Corporation handles registration of Malaysian patents by two methods: national phases of Patent Cooperation Treaty applications, or direct national applications. Utility models are referred to as Utility Innovation (Certificates) in Malaysia and are processed similarly to patents, except do not require an inventive step and can only cover a single claim per application. All applications may be filed in either English or Malay (Bahasa Malaysia), although the majority are filed in English. Additionally, the basic filing fee for patent registration in Malaysia starts from RM 1,490, or approximately EUR 330.

In today’s article we explore the different types of patent available in Malaysia, how and where to register them, and the enforcement options available.

Continue reading “South-East Asia IPR Basics Series: Patents and Utility Models in Malaysia” »