Trade mark search: Why it is important and how to conduct it properly

WRITTEN BY XUAN NGUYEN

Trade marks (brands) represent one of the principal assets of a company. Trade mark is crucial to your success because it allows clients and consumers to easily identify and find products and services. Protection comes with a price, and startups and SMEs often have limited budgets. However, in the digital economy, trade mark protection is well worth the investment. It secures legal certainty and prevents others from illegally copying or using your mark to take advantage of your reputation. Strong trade mark protection enables you to stay competitive and nurture a safe environment for thriving cross-border expansion.

search-2951638_1920(Photo source: https://pixabay.com/)

Trade mark searches are an integral part of any trade mark protection strategy, but many companies do not routinely perform them or do not do so thoroughly enough. In this article we will provide you with a full rundown of the importance of trade mark searches and how to effectively conduct them.

1. Why are trade mark searches needed?

A pre-filing trade mark search

By finding out what other trade marks are out there, you will learn whether there is room for the trade mark you want to protect. A pre-filing trade mark search allows you see if there are any pre-registered/pre-filed trade marks that are identical or significantly similar to yours (which may lead to their registration being refused). If the search results reveal the existence of trade marks that are likely to block your trade mark registration, at least you have a hint before taking further steps, for example by changing the proposed trade mark or removing prior trade marks if feasible (this may be achieved via amicable negotiations or by cancellation actions, which are usually attempted with the support of a trade mark expert). As a result, these searches will help businesses to avoid wasting significant time and resources preparing and filing an application for a trade mark that may not be available for registration.

Watch out for potential infringements

Owning a registered trade mark does not automatically guarantee that someone else do not use it, or register a similar trade mark. Regular trade mark monitoring is highly recommended, as it can result in the early detection of potential infringements such as counterfeits, copycats, bad faith registrations, etc.

In practice, copycats usually operate in the same industry as the trade mark holder; by using your marks they can easily mislead consumers about the quality and origin of their products and services. Consequences can include damaging your reputation, decreasing your revenue and preventing your expansion plans. The early detection of infringement allows you to quickly initiate a proper solution to stop or mitigate the violations and to notify your clients in a timely fashion, thereby avoiding brand dilution or misleading messages.stop-634941_1920

(Photo source: https://pixabay.com/)

Moreover, trade mark protection is territorial: protection exists only in the country where you have registered your trade mark. Developing an efficient brand protection plan for cross-border markets has been seen as a big challenge for many businesses, especially SMEs. In fact, like many other countries, most South-East Asian countries apply the first to file principle for trade mark protection, which gives priority to those who first file an application to register the trade mark. This rule, unfortunately, opens the door for bad-faith registration practices i.e., a third party (a trade mark squatter, local company or any other party) intentionally files a trade mark application in a particular country before the trade mark owner to become a legal owner of the trade mark. By successfully registering your trade mark, they can take advantage of your successful business for commercial gain in your target market – this can have various consequences, from damaging your reputation to excluding you from the market. However, after a trade mark filing, intellectual property (IP) offices will usually publish the trade mark application for public inspection for a specific period of time, to allow third parties to file an opposition (for example, oppositions can be filed in Cambodia within 90 days, in Singapore within 2 months and in the Philippines within 30 days of the publication date). Detecting bad faith registrations promptly allows you to react in a timely fashion.

2. Where to search?

There are many sources that a brand owner can use to run a trade mark search. Some suggestions are detailed below.

a) Trade mark databases

Global Brand Database 

The Global Brand Database, administered by the World Intellectual Property Organization (WIPO), automatically uploads trade mark records sent by national, regional and international collections – for example from Madrid – The International Trademark System (details of database content sources here).

Through the Global Brand Database, you can:

  • conduct a search to cover multiple sources simultaneously in a large number of countries;
  • search by text, class, goods or services, holder names, countries and even images (using AI search-by-image filter functions).Screenshot 2021-07-01 13.29.51

National trade mark databases

Although the Global Brand Database covers a large number of trade mark collections, it depends on how often national offices communicate updated information to the WIPO. Also, some national databases are not available on the Global Brand Database, Myanmar is one example. Therefore, it is also advisable to run simultaneous and additional searches in the database of your target national IP office to get the latest updates on applications that have been filed/registered.

In South-East Asia, SingaporeVietnamIndonesiaMalaysiathe PhilippinesBruneiLaos and Cambodia are the countries in which trade mark databases are available in English.

b) The internet, e-commerce platforms and social media networks

A comprehensive trade mark search should not only review trade mark databases, it should also detect unregistered marks that are being used by third parties on the market and may be infringing your trade mark rights. Conducting searches of multiple sources that counterfeiters, copycats and other criminals may be using to take advantage of your marks is always recommended. Searches should be conducted on the internet, e-commerce platforms and prevailing social media networks.

pexels-photomix-company-230544

(Photo source: https://www.pexels.com/)

With over 87% of the search market share, Google is a dominant search engine worldwide and its share is even higher in South-East Asia (over 90% for most countries in the region)[1]. Conducting a Google search can take you to numerous websites, links, apps and networks that may contain signs of potential infringement. The Covid-19 crisis is accelerating the already thriving digitalisation process, driving more and more businesses and consumers online. Amid this overwhelming wave of online activity, e-commerce platforms have become vital market places to fulfill people’s needs. In South-East Asian countries, Shopee, Lazada, Tokopedia, Bukalapak, Tiki, etc. are the most-visited e-commerce sites[2] where you can find various types of fake products in different price ranges. Using social media networks such as Facebook, Instagram or TikTok in order to reach out to consumers and sell counterfeits is also quite common in the region.

3. Conclusion

Some popular methods that businesses can use to run trade mark searches have been outlined above. However, consulting a trade mark specialist to obtain better search results and practical advice is usually recommended. Comprehensive trade mark searches should take various factors into account. As well as names, key words and images, translations and national phonetic variations of the search terms should be included. Many South-East Asian countries, such as Thailand, Laos, Cambodia, Indonesia, and Myanmar, have their own alphabets, which do not use Roman characters. Using a local specialist to help with trade mark searches is advisable, as they will maximise the search effectiveness by avoiding any gaps.

Moreover, when the results come in, expertise is required in order to carry out a proper analysis. For example, when considering the likelihood of identical or similar marks being confused with one another, an experienced trade mark specialist will know how to assess the situation by properly reviewing the similarity of the products and services that the marks are being used for. They can provide you with a practical assessment of the likely success of your registration application or if you will be able to take actions against potential infringements.

Trade mark searches are vital for your brand protection strategy, especially in the fast-paced digital economy. Being well informed will save you a huge amount of time and resources, and secure a safe way for your business to grow and thrive.

The SEA IP SME Helpdesk developed and published a Guide to Trade Mark protection in South-East Asia (here) and How to Remove Counterfeit Goods from e-commerce Sites in South-East Asia (here).

For more information about IP in SEA, check out our website at https://intellectual-property-helpdesk.ec.europa.eu/regional-helpdesks/south-east-asia-ip-sme-helpdesk_en.

The SEA IP SME Helpdesk is an EU initiative that provides free, practical IP advice to European SMEs in South-East Asia. EU companies can send questions to question@southeastasia-iprhelpdesk.eu and will receive a reply within 3 working days.

[1] https://gs.statcounter.com/search-engine-market-share/desktop/worldwide

[2] https://www.campaignasia.com/article/the-top-10-most-visited-southeast-asia-ecommerce-sites/468523

IP protection in the South-East Asia region: What EU SMEs should know

Why is IP protection important for EU SMEs?

Small and medium-sized enterprises (SMEs) are the backbone of the EU economy. They represent 99 % of all businesses in the EU, account for more than half of Europe’s gross domestic product (GDP) and employ about 100 million people[1]. The positive association between economic performance and ownership of intellectual property rights (IPRs) is particularly strong for SMEs.

World IP Day_1200x675px

SMEs that own IPRs generate 68 % higher revenue per employee than SMEs that do not own any IPRs at all, according to the latest study published in 2021 by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) on IPRs and firm performance in the EU [2]. As the study shows, IPR protection has become crucial to the success of SMEs, and it is thus key for SMEs to be aware of the value of intellectual property (IP) and of the best ways to benefit from it.

IP relates to intangible assets, which comprise intellectual and industrial property. IPRs can be protected by law under patents, trade marks, industrial designs, copyright, plant variety protection, but also via trade secrets, unfair competition, civil and criminal law.

SMEs can benefit from IP protection and seize business opportunities globally if their IP portfolio is managed effectively. A strong IP strategy also helps SMEs attract funds from potential investors, enabling them to internationalise in emerging markets. According to a joint report between the EPO and the EUIPO in 2019[3], IPR-intensive industries generated approximately 45 % of the total GDP in the EU, worth EUR 6.6 trillion. Those sectors also accounted for most of the EU’s trade with the rest of the world, comprising 96 % of goods exported from the EU.

IP protection is also crucial to fostering innovation by providing a return on investment on Research and Development (R&D). Furthermore, a well-prepared IP protection strategy will help SMEs prevent others from free-riding on their IP. Importantly, an SME, being the legitimate owner of IPRs, will have recourse to enforcement actions to stop an activity infringing their IPRs.

IP protection is the key to success of EU SMEs expansion in the SEA region[4]

Southeast Asia (SEA) region is a promising destination for EU SMEs, thanks to their open policies and incentives for attracting foreign investment. The region is a thriving economy with a combined GDP of USD 3 trillion in 2018 (the 5th largest in the world) and a population of 649.1 million people[5].

The SEA region represents the EU’s 3rd largest trading partner outside Europe (after the US and China) with more than EUR 237.3 billion of trade in goods in 2018. The EU is the SEA region’s 2nd largest trading partner after China, accounting for around 14 % of SEA trade. The EU is by far the largest investor in the SEA countries with the Foreign Direct Investment (FDI) stocks in the SEA region accounting for EUR 337 billion[6].

To date, the EU has two Free Trade Agreements already in force with Vietnam and Singapore, respectively – EU-Vietnam Free Trade Agreement (EVFTA) and EU-Singapore Free Trade Agreement (EUSFTA) – and is negotiating a comprehensive economic partnership agreement with Indonesia. These FTAs facilitate market access through the elimination of customs duties and non-tariff barriers from both sides, as well as stimulating investment flows. Each Agreement includes a comprehensive IPR chapter with commitments to enhance IPR protection and enforcement in line with international standards.

The report of the Organization for Economic Co-operation and Development (OECD) and the EUIPO published in 2019[7] shows that companies suffering from counterfeiting and piracy continue to be primarily registered in Europe. China continues to be the biggest origin of counterfeit and pirated goods, but some of the major SEA economies are also listed among the top 25 provenances. As the study shows, the exposure of EU SMEs to IPR infringements in the SEA region is high; and EU SMEs should consider this when preparing their IP strategy.

In the COVID-19 context, IP infringement in the online environment appears to be increasing in SEA countries, via e-commerce and social media platforms, due to the lack of effective regulations addressing online IP violations. IP owners are advised to seek registration for protection of their IPRs in each country of interest. Registration at the IP Offices and in the customs registers may contribute to successful enforcement.

Stay tuned to IP Key South-East Asia and South-East Asia IP SME Helpdesk for success stories of EU SMEs operating in Southeast Asia and how IPR protection supports these businesses during the pandemic.

***

How is the European Union supporting EU SMEs in SEA?

On top of bilateral trade agreements introducing commitments for enhanced IPR protection and enforcement, the EU counts on IP Dialogues and IP technical cooperation programmes to support EU businesses trading and investing in the region, including SMEs.

The European Commission (EC) launched, among others, the following initiatives to support EU SMEs.

South-East Asia IP SME Helpdesk (website here)

The South-East Asia IP SME Helpdesk is an initiative of the EC to support EU SMEs to protect and enforce their IPRs in SEA. All services offered by the Helpdesk are free of charge.

In a nutshell, the Helpdesk’s services cover (i) Enquiry Helpline (tailor-made confidential advice to EU SMEs on IP related to SEA within 3 working days), (ii) IP Guides and Country Factsheets and (iii) Onsite and online Trainings. The South-East Asia IP SME helpdesk is part of the IP SME Helpdesk initiative which EU/COSME SMEs and researchers participating in EU-funded projects both to protect and enforce their Intellectual Property (IP) rights in relation to Europe, China, India, Latin America and South-East Asia.

IP Key South-East Asia (website here)

IP Key South-East Asia (IP Key SEA) is a four-year programme funded by the EU and implemented by the EUIPO aimed at supporting IP rights protection and enforcement across South-East Asia, with a view to creating the appropriate legal and economic environment conducive to trade and investment in the region. By contributing to the enhancement of IP frameworks and implementation of best practices, IP Key SEA aims to ensure a level playing field for both local enterprises and EU stakeholders. IP Key SEA is one of three IP Key flagship programmes that are being implemented by the EUIPO, together with IP Key China and IP Key Latin America.

Other incentives for EU SMEs

EU SMEs now can apply for assistance to protect their IPRs under the following programmes:

  • The Ideas Powered for Business SME Fund: a 20 million Euro grant scheme created to help SMEs develop their IP strategies and protect their IPR, at national and EU level (more details here).
  • Horizon IP Scan: Helping SMEs manage and valorise IP in research and innovation collaborations (more detail here).

#KNOWBEFOREYOUGO

IPR protection in SEA is crucial for EU SMEs to ensure a safe ground for their business activities. Without protection, enforcement of the IP rights will not be possible. Therefore, it is highly advisable for EU SMEs to make an effective use of the various EU initiatives to set up their IP strategy before expanding to the region. Get in touch with the SEA IP SME Helpdesk (question@southeastasia-iprhelpdesk.eu) and IP Key SEA (IPKEY-SEA@euipo.europa.eu) to learn more about the available tools.

Drafted by:

IP Key SEA & South-East Asia IP SME Helpdesk

EN IP Key SEA 1200x675_02                                     

[1]https://ec.europa.eu/growth/smes_en#:~:text=Small%20and%20medium%2Dsized%20enterprises%20(SMEs)%20are%20the%20backbone,every%20sector%20of%20the%20economy.

[2]http://documents.epo.org/projects/babylon/eponet.nsf/0/7120D0280636B3E6C1258673004A8698/$File/ipr_performance_study_en.pdf

[3] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/IPContributionStudy/IPR-intensive_industries_and_economicin_EU/summary/IP_Contribution_Report_092019_execsum_en.pdf

[4] The South-East Asia (SEA) region consists of 10 countries, including Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, the Philippines, Singapore, Thailand, and Viet Nam.

[5] https://www.aseanstats.org/wp-content/uploads/2019/11/ASEAN_Key_Figures_2019.pdf

[6] https://ec.europa.eu/trade/policy/countries-and-regions/regions/asean/

[7] https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/observatory/documents/reports/trends_in_trade_in_counterfeit_and_pirated_goods/trends_in_trade_in_counterfeit_and_pirated_goods_en.pdf

IP exploitation strategy in South-East Asia

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Written by Marta Bettinazzi

In these changing times, we all need to find the time to prepare for the future and draft our strategy for success. This should also mean reevaluating our resources to see if we can make better use of them.

A good shift of perspective is to stop considering your intellectual property (IP) only as a cost (registration, maintenance). IP is an asset and you should learn how to make the best out of it. We will briefly look at the options that exist for exploiting intellectual property rights (IPR), then examine both the risks and the best practices to put into place in South-East Asia (SEA).

The best way to exploit your IPR depends on the kind of IP you own, but it can be summarised in two big categories: licensing and selling.man-sitting-near-fruits-723991

Selling means that you permanently transfer your IP (or better, the economic rights connected to it) to someone else. For example, you sell your patent to a bigger company that can mass-produce the invention you have patented or, more commonly, your IP is purchased as part of a merger-and-acquisition operation. In this case one company would acquire all the IPR that were part of your assets (trade marks, copyrights, patents, etc.). A famous example is the acquisition of WhatsApp by Facebook for the unimaginable price of USD 21 billion (more info here).

Licensing means that you, as an IPR owner (licensor), authorise someone to use your rights (licensee) in exchange for an agreed payment (fee or royalty).

This can allow you to expand your global presence and also ensure a source of revenue. On the other hand, the licensee can manufacture, sell, import, export, distribute and market various goods or services that they may otherwise not have had the rights to.

We can group the license agreements in three categories: Technology License Agreement; Trademark Licensing (and Franchising) Agreement; Copyright License Agreement.

Often these kinds of agreements are combined with and/or included in broader contractual settings, for example distribution contracts.

Therefore, the first step in an effective IP strategy is to review the agreements you already have in place with your partners and distributors to be sure that they include clear rules regarding the use of your IP.

In SEA it’s not uncommon for local distributors to register the IP (usually the trade marks) of their international partners under their own name. This way the local company acquires de facto an exclusive license on the product(s) of the SMEs. In fact, if the local company is the owner of the trade mark, it can prevent others from using it, including other companies authorised by the SME (the original owner of the trade mark). It might be said that you are in a marriage with your partner, and you might need an expensive and lengthy divorce (judiciary decision) to be able to leave it.

Before entering any kind of distribution agreement, give special attention to the difference between the registration of the trade mark (and IP in general) and the registration of the product itself. The latter is an administrative step needed to import a ‘new’ product into a country, but it does not ensure any protection for your IPR.

In other words, if your distributor is offering to do the product registration to allow you to import goods into the country, this does not imply that he/she is also going to help you with the registration of the trade mark or patent (or any other IP).

Keep in mind that a formal licensing agreement is possible only if the IPR you wish to license is also protected in the country or countries of interest to you. Without registering your IP in the country, you are not only unable to properly license it, but you also have no legal right to put any restriction on its use by anyone else.

Despite provisions in international treaties, courts and administrative bodies in SEA seldom extend protection to well know trade marks (see, as a reference, the famous IKEA case in Indonesia). Only Malaysia and Singapore ensure some level of protection for de facto trade marks and take into account the use of a non-registered trade mark.

On a side note, do not forget to consider registering your trade mark in local scripts as well, for example in Thailand, Malaysia, and Myanmar. This ensures complete protection for your trade mark, limiting the possibility of cheaper copycats riding on your reputation by using a transliteration of your trade mark. pink-and-white-weighing-scale-3964619

Also, note that many countries in SEA require license agreements to be registered if they are to be enforced. Some countries, like Thailand, also require the registration of trade mark licenses, others, like Vietnam, only require the registration of technology transfers.

To recap, be sure to register your IP before entering into any agreements with local partners. If this is not possible in the immediate future at least include a clause in your agreements to prevent the local company from registering your IP ‘for you’.

Technology transfer agreements can be very remunerative, but can also put your business at risk — you could be creating your own, stronger competitor. Therefore, it is advisable to either license a technology you have patented in the country where your counterpart will operate or you license something (an idea, a technology, some know-how, a recipe, etc.) that is secret. In this case, you have to be sure that your partner is bound by the same level of secrecy.

Reality is not that simple. Even if something is patented (and therefore publicly disclosed, for example in Europe) local companies might not be advanced enough to copy it, and may be interested in entering an agreement with you to acquire the know-how surrounding the patent.

This might present itself as an unpredicted and very welcome source of revenue for you, but you are running the risk of your new partner becoming your competitor in the future.

A good way to balance this issue is to bind your partner to secrecy regarding the unpatented part of the technologies.

As mentioned, technology transfers are not always encouraged by legislation in SEA and can often be subject to registration requirements. This means that if the agreement is not registered at the public office it cannot be enforced (in cases of breach or liability). Some countries have also limitations regarding the kind of technologies that can be transferred to and from their territory.

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In short: the best strategy is always to patent all your cutting-edge technologies in as many countries as possible (including new markets like SEA); combine a good patent strategy with a high level of secrecy and be aware of local legislation.

A final thought: do not forget to prepare all your contractual documents in both English and the local language and be sure to agree and sign the local language version. Most of the courts in SEA can only accept (and understand) documents in the local language. A later translation could be not only expensive but also problematic; your counterpart could propose their own translation of the text, which could lead to endless interpretation problems.

For more information you can have a look at our guides on trade marks, patents and technology transfers, or at our country factsheets.

Do not hesitate to reach out to the Helpdesk if you have any questions on IP in SEA.

Marta Bettinazzi

IP Business Advisor

South-East Asia IPR SME Helpdesk

E: marta.bettinazzi@southeastasia-iprhelpdesk.eu

W: www.southeastasia-iprhelpdesk.eu

 

COVID-19 and overwhelming amounts of counterfeits online: What businesses should do — right away!

Written by Xuan Nguyen

 

According to an update from the World Health Organization (WHO), by 15 April 2020 the coronavirus disease (COVID-19) had already infected 1 918 138 people in 213 countries, territories and areas, resulting in 123 126 deaths. Various governmental interventions have been applied, including border closures, strict quarantines, travel bans, and the forced closure of many businesses. 

It is expected that a deep economic crisis will follow the pandemic (which is still evolving and unpredictable). So far a dramatic slump in economic activities has been witnessed, affecting not only the supply chain (production of goods and services) but also demand (consumption and investment). Many people are forced to stay at home, factories have stopped operating, restaurants, shops and public places are closed. Consumers are being driven toward online shopping marketplaces. While major parts of the world, including, Europe, the USA and a lot of Asia, are struggling to fight against the crisis, in China the situation is now apparently under control and factories are gradually returning to normal.

Photo source: https://pixabay.com

Photo source: https://pixabay.com

The current situation has also created fertile ground for the sale of counterfeit goods online, especially in sudden upsurge sectors such as pharmaceuticals and medical devices. According to Interpol, during one week of action (3–10 March 2020), authorities in 90 participating countries seized more than 4.4 million units of illicit pharmaceuticals, more than 37 000 unauthorised and counterfeit medical devices, and closed down more than 2 500 web links, including websites, social media pages, online marketplaces and online adverts for illicit pharmaceuticals[1].

In South-East Asia all 10 countries have reported a substantive number of COVID-19 cases. Since there was already a high number of local counterfeit manufacturers available, and a significant trade exchange with nearby China, the region is very high risk in terms of counterfeits invading the market. Recently, Thai police seized 45 000 fake COVID-19 test kits, 350 000 medical masks, and 1 200 infrared thermometers that were smuggled into the country by two Chinese men. All products sold online claiming to be COVID-19 test kits at the moment are fake, according to the Thai Food and Drug Administration (FDA)[2].  Vietnamese authorities also found that a company in Vietnam had been making masks out of toilet paper amid the coronavirus outbreak and skyrocketing demand[3].

These figures are just the tip of the iceberg. There are overwhelming numbers of counterfeit products. This article will discuss how counterfeits are being fueled by an online market and what the brand owner should do to mitigate the impact.

Why have counterfeits surged in the shadow of the COVID-19 outbreak?

  • The COVID-19 crisis has resulted in a spike in demand for essential products, such as personal protective devices (facemasks, hand sanitizers and antiviral medication), vitamins, pharmaceuticals, foods and beverages, as well as non-essential products, such as cosmetics and personal care items, household products, electronics, work-from-home tools, entertainment technology and children’s toys. Meanwhile, the majority of factories are being shut down, causing the shortage of supplies of genuine products. ‘In moments of high demand and rushed buying decisions, counterfeiters can jump on the opportunity and sway buyers in their direction[4].’
  • People are shopping online much more than ever. According to analysis by ACI Worldwide, ‘The COVID-19 crisis is driving the global growth of e-commerce sales, with millions of consumers worldwide in quarantine shopping for goods, services and entertainment online. Transaction volumes in most retail sectors have seen a 74 percent rise in March compared to the same period last year.’ The dark side of this phenomenon is that people can be more easily tricked. Many sellers use photos of genuine products while offering extremely low prices to attract online buyers during a time of crisis, and then provide fake products to consumers. It can also create a backlash for brand owners, leading consumers to mistakenly believe the product quality is very low and to lose interest in the brand.
  • The crisis has caused an immediate reduction in the income of many people across the globe, and consumers are looking for the cheapest possible versions of goods because of their reduced budgets. While the pandemic is still evolving, millions of people have lost their jobs following business restrictions and closures. According to a report by the International Labour Organization (ILO), if we are experiencing a ‘“High” scenario where COVID-19 has serious disruptive effects, reducing GDP growth by around 8 percent: Global unemployment would increase by 24.7 million, with an uncertainty ranging from 13 million to 36 million[5].’ Given the current environment of uncertainty and fear, and the real threat of significant declines in income, consumers in many economies are unable to purchase branded goods and services as before; buying cheap counterfeit products can be a tempting option.
  • Many counterfeit suppliers are concentrated in China where the situation is under control and factories have gone back to their normal operations. This means counterfeiters may be in a better position to jump onto the upsurge in demand before legitimate sellers can reopen production. Amid the panic of the crisis, a lot of companies, especially small and medium-sized enterprises (SMEs) are concentrating on solving critical issues such as declines in revenue, insolvencies and job cuts, rather than keeping an eye on monitoring the marketplaces for fakes. As a result of the lack of the legitimate owners’ attention, counterfeiters can more easily flood the market with fakes.
  • Customs checks, market investigations, and raid and seize activities have been reduced following social distancing and safety measures. In the same way as many other public services during this health crisis, officers involved with anti-counterfeiting activities have been physically limited to avoid the risk of infection. This means that infringers have more opportunity to take a free ride on the market.

What should brand owners do?

During volatile market conditions and the resulting increase in online shopping, consumers easily become targets for counterfeiters. Brand owners need to stay on top of monitoring and combating fakes more than ever. Otherwise, they may lose sales to counterfeiters.

  • Focus on monitoring e-commerce and social media platforms and proactively communicate with the customers. During the current social distancing measures and travel bans, a majority of customers has been using the internet for buying stuff instead of shopping physically, you need to keep a close eye to the net to protect your revenue and maintain safe channels for your business during the crisis, and after it ends. When some sectors have a spike in demand while genuine supply chains are being disturbed, fakes become a more serious issue. Brand owners should be more protective about their communications with their consumers, guiding them to available supply channels with authentic products and warning them about fakes.
  • Conduct an investigation and gather facts. Don’t make a groundless claim, it will cost you both time and money. Once you have found a suspected infringement on the internet, the first step is to quickly collect evidence on the infringer, e.g. basic information (name, address, other contact details, the scale of their business and the origin of their products).
  • Take-down Notices and Warning Letters: Utilise the available complaint functions on the e-commerce platforms and encourage social media operators to quickly take down infringing products. In the meantime, as a legitimate brand owner, you can also consider sending Warning Letters to the counterfeiter to ask them to stop their illegal activities.
  • Inform the competent authorities: In South-East Asian countries, local governments have recently made many efforts and improvements in combating online counterfeits. Brand owners can find available complaint tools — such as hotlines, emails or complaint submissions on the websites of customs, market police departments and other relevant national bodies — to promptly notify the authorities.
  • Seek advice from local IP experts. In critical cases, companies are usually advised to consult with local experts that are familiar with infringement cases and have close relations with enforcement bodies such as customs, investigators and the police. It is worth noting that many counterfeits are advertised in local languages or posted on local websites, so monitoring using detection software or search tools (usually in Roman characters) doesn’t work effectively.

The COVID-19 pandemic is unprecedented. Our lives, and the way we do business, have changed in recent weeks. Brand owners should swiftly adapt to the new situation to protect their businesses against counterfeiters. Neglecting this during the crisis might cost you more than you imagine, i.e. from losing your faithful customers to losing your entire share of the market. Keeping your company safe amid the chaos, and getting ready for normal business to resume, is the only way to retain both your revenue and your reputation.

[1] https://www.interpol.int/en/News-and-Events/News/2020/Global-operation-sees-a-rise-in-fake-medical-products-related-to-COVID-19

[2] https://thethaiger.com/coronavirus/big-arrest-on-price-gouging-of-covid-19-safety-gear-and-fake-test-kits

[3] https://www.insider.com/vietnam-company-using-toilet-paper-for-coronavirus-masks-faces-penalty-2020-2

[4] https://www.redpoints.com/pdfs/market-research-impact-of-covid-19-on-ecommerce-sales/?utm_campaign=HS284-market-research-survey-impact-of-covid-9-on-ecommerce-sales&utm_medium=email&_hsmi=84691783&_hsenc=p2ANqtz-_KXO0X8sOU11ZaL9gXi53LxFBQjYdtj-ZtCHwLlocKYxHxgibn05yKKsXyfyIzVAccGKAF&utm_content=84691783&utm_source=hs_automation

[5] https://www.ilo.org/wcmsp5/groups/public/—dgreports/—dcomm/documents/briefingnote/wcms_738753.pdf

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” »