South-East Asia IPR SME Helpdesk

Case Studies

Case Study 18 - Appealing against a descriptiveness refusal in trade mark filling in Thailand

Background:

“Company A” in Thailand submitted a trade mark application to the Thai Department of Intellectual Property (DIP) to register the mark “TMB Make THE Difference” for banking services in Class 36. After examining the application, the DIP accepted to protect the mark, but with the phrase "Make THE Difference" disclaimed for being descriptive. The company was reluctant to disclaim their right over the phrase "Make THE Difference" as they considered it an important slogan in the company’s branding strategy.

Case Study 17 - Non-use of registered trade mark in Thailand: using a survey to determine non-use

Background:

Liwayway Marketing Corporation ("Liwayway") is the owner of a trade mark that was registered with the Thai Registrar of Trade Mark in various classes. However, its trade mark was possibly being expunged due to the request of Oishi Group Public Company Limited ("Oishi"), a Thai exporter of products such as aerated water, fruit juices, ready-to-drink green tea and carbonated drinks. Among others, the grounds put forward by Oishi was that there had been non-use of the mark for a period of at least 3 years up to 1 month before the expungement action ("Statutory Period").

Case Study 16 - Seizure of counterfeit goods in Laos

Background:

A manufacturer of engines for agricultural activities had its trade mark duly registered in Laos. Lately, then found out that counterfeit products bearing its registered trade mark were being commercialized in several local retail stores. The issue was only discovered when the company received complaints about the product quality from buyers who mistakenly bought the counterfeit products which they thought were originals. This affected the company’s business and brand reputation.

Case Study 15 - Arguments against descriptiveness rejection of trade mark filling in Cambodia

Background:

A French pharmaceutical company tried to file two trade marks with the Department of Intellectual Property Rights ("DIPR") for goods including cosmetics, soaps, shampoos and perfumes. The company had already successfully registered these two trade marks in more than 15 jurisdictions. The DIPR issued a Notice of Preliminary Rejection of Mark Registration, on the basis that both trade marks were descriptive, therefore asking the applicant to provide supporting arguments and evidence to show that the marks were distinctive.

Case Study 14 - Design registration in Automotive industry in Singapore

Background:

Mobix Auto (“Mobix”) is a European company specialised in manufacturing parts and accessories for automotive manufacturers. Having achieved considerable market share in its home market and some other European countries, Mobix plans to introduce its products to the South-East Asian market, after learning of the growing demand for vehicles and vehicle components in this region.

Before entering the region, Mobix attends an automotive trade show organised in Singapore to survey the potential markets in the region, and to establish contacts with potential local partners. At the trade show, Mobix comes into contact with Metro Singapore (“Metro”), a distributor of parts and accessories in Singapore and the region.

Case study 13 - Customs seizures of goods suspected of IPR infringement in Vietnam

Background:

A German company, owner of a trade mark (“XXX”) protected in Vietnam since 1995 for uninterruptible power supplies, suspected that a consignment infringing its trade mark was being shipped to Hai Phong Port in Vietnam. The shipment contained a large amount of uninterruptible power supplies bearing the sign "XXX-UPS’’, imported by a local company (the Vietnamese Company).

Case study 12 - IP infringement by using confusingly similar marks in Vietnam

Background: 

A Dutch company used its trade mark ‘XXXX-LON’  registered in Vietnam for a wide range of products and services and it entered into a licensing contract with its subsidiary in Vietnam (the Subsidiary), whereby the Subsidiary is authorized to use the trade mark ‘XXXX-LON’ for steel frames and other steel products under Class 06.

The Subsidiary discovered that many companies in Vietnam have been trading and marketing some construction materials similar to their products and called them ‘XXXX-LINE’, which sounded very similar to its trade mark ‘XXXX-LON’.

After investigating, the Subsidiary found out that it was one of its previous Vietnamese sub-contractors (the Vietnamese Company) to have filed an application for registration of the trade mark ‘XXXX-LINE’ for services under Class 35: "Trading in metal sheets" and Class 42 "Processing metal sheets", and marketed their products, including aluminum sheets, steel sheets, steel ceilings, aluminum ceilings and steel frames, as ‘XXXX-LINE’.

Case study 11 - Patent Prosecution Strategy for manufacturing in Vietnam

Background:

An Austrian SME operating in the sport industry, developed a new patentable technology to manufacture sports equipment and was also seeking for a Vietnamese manufacturer. The company was new to IP knowledge and patent application procedure, and therefore needed to understand the best patent application route to protect their product tailored to their needs to internationalise their operations. To pursue it goals, the company also needed to quickly draw and implement a business strategy to protect its idea and to produce in Asia without incurring in major IP risks. Their plan included manufacturing in Vietnam and sell in Europe and other Asian markets and potentially worldwide,

Case Study 10 - Trade mark registration in Thailand and South-East Asia in Automotive Industry

Background: 

Textra Automotive (“Textra”) is a medium-sized European company known for producing high-tech sensors for cars. After an extensive market study, Textra has decided to enter the ASEAN market. It identifies Siam Manufacturing Group (“Siam”) as a promising partner in Thailand and enters into an agreement with the latter to manufacture and distribute sensors to vehicle manufacturers in Thailand. If the products prove profitable in Thailand, Textra will expand its business to the other major automotive manufacturing countries in the region.

Following three successive profitable quarters, Textra decides to pursue sales of the products in Indonesia, Malaysia, Vietnam and the Philippines. It applies to register its name as a trade mark in Thailand, with a plan to register the same mark in the other four countries, claiming priority from the Thailand application. However, Textra discovers that the trade mark has already been registered by Mais Manufacturing Ltd. (“Mais”).

Case study 9- Non-use cancellation actions in Thailand

Background:

Company A wanted to apply for registration of a trade mark for “snack food” in Class 30 in Thailand, but found that a similar trade mark had already been registered for the goods “potato chips, crispy rice chips, corn flakes, and crackers” in the same class by a Thai company (Company B). The goods covered by Company B are classified as ready-to-eat products under Group 3, i.e., food with labeling that is subject to regulatory approval.