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Manage your Intellectual Property in South-East Asia

Case Studies

Case Study 6 - Relevant clauses for license agreements

Background: 

A European company in the green technology field with an advanced technology for waste management currently manufactures its products in Europe and is willing to enter into a license agreement with a Malaysian company to grant licenses for manufacturing, distribution and selling of its products with non-transferrable exclusive and sole right for a period of five years. The parties enter into negotiations of the main terms of the deal to be inserted in the written agreement.

Case Study 5 - (included in the 2016 update of the Guide ‘South-East Asia IPR SME Helpdesk Guide: Protecting your IP at Trade Fairs in South-East Asia’)

Background:

A Slovenian company in the automotive industry exhibiting at the Automotive Trade Fair in Vietnam is aware that a Chinese company which has been reported infringing its design in the past is also exhibiting at the same fair. The Slovenian company has checked the list of exhibitors before starting the exhibition and therefore had the time to be prepared should any infringement occur during the fair, including preparing the original certificate of its design registration in Vietnam and identifying a lawyer who could provide advice directly at the exhibition in case of need. 

Case Study 4 - ME Case Study (included in the 2016 update of the Guide ‘Top 20 Considerations when entering a new market’)

Background:

An European manufacturer engaged in the green technology industry with a innovative technology is interested in finding an exclusive distributor located in Singapore to expand its business in South-East Asia. The company participated into a programme funded by the European Union helping European companies to establish long-lasting business collaborations in South-East Asia. During the coaching session, it emerged that the company owns a trade mark and few patents in Europe but was not aware of the territorial nature of IP and which actions shall be taken in relation to trade mark and patent registrations in South-East Asia as well as to the negotiations with the local distributor in Singapore. 

Case Study 3 – Defeating non-use claim with modified trade mark in Vietnam

Background

A registered trade mark in Vietnam which was a product label for instant noodles was subject to a request for cancellation for non-use.
Under Article 95 of the Vietnam’s Intellectual Property Law, a trade mark registration may be cancelled at the request of a third party if the mark has not been used by its owner or its licensee without justifiable reasons for five (5) consecutive years prior to the request for cancellation for non-use, except where use of the mark has commenced at least three (3) months before the request for cancellation for non-use.

In fact, the exact packaging design had not been used by the trade mark owner, but it was a slightly modified version of the said mark that had been used.

Case Study 2 - Action against packaging design copies in Myanmar

Background

A Dutch company, Company A, specialising in the production and distribution of professional sealants for commercial and home use, had registered ownership of its trade mark and packaging design for its growing sales of sealants in Myanmar. After several years of sales in Myanmar, they were alerted by their local distributor to the existence of competing products bearing similar packaging design, but with a different logo, on sale in Yangon and Mandalay by resellers of hardware products. 

Case Study 1 - Revoking a conflicting “earlier trade mark” in Singapore

Background

A Spanish company, Company A, successfully registered its “AAA” trade mark in Singapore, starting from 2 April 1986 (“1986 Mark”). The “AAA” mark was registered in Class 3 of the International Classification of Goods under  the category of  “perfumery with essential oils”. 

On the 20 November 2001,  a US company, Company B, filed an application to register the same “AAA” mark in Class 3 under “bleaching preparations and other substances for laundry use; cleaning; polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; colognes; toiletries; sunscreens; cosmetics; skincare products; deodorants and antiperspirants for personal use; shaving preparations” (“Company B’s Application”) 

Case Study 21 – Inexperience of Indonesian courts with trade secret cases

Background

In an ongoing case, a European engineering firm, PT Basuki, filed a claim against a large construction company in Indonesia and several other parties, for the misuse of its secret know-how in boiler construction. PT Basuki claimed that its secret boiler design know-how was used by the defendant to develop similar products, however, PT Basuki's claim was dismissed by the Bekasi District Court. The judges reasoned that the Commercial Court rather than the District Court ought to have jurisdiction over the case because the case concerned intellectual property, and the Commercial Court had previously heard a related industrial design case between the same parties. However, the Supreme Court upheld the plaintiff's appeal against the case dismissal. The case was sent back to the Bekasi District Court to be retried and is still on-going.

The Supreme Court ruling confirms what the law has already stipulated - the case was correctly brought before the district court in Bekasi. The initial rejection of the case by the District Court was incorrect and can only be explained by their difficulty with, and lack of experience in, handling trade secret issues. This is a common problem in developing IP jurisdictions in Southeast Asian countries where trade secret issues are seldom brought before the courts despite the fact that the law may provide for it.

The new Indonesian Electronic and Information Technology Law also contains provisions against unauthorised access to computer systems. However, we have yet to see an actual application of these provisions.

Case Study 20 - Theft of trade secrets and tracking electronic data in Singapore

Background Trade secret theft can be extremely difficult to detect and even harder to prove in a court of law. In some cases, victims may even hold strong suspicions over the loss of certain trade secrets to former employees but, as is often the case, are unable to take any action to redress losses because of a lack of proof. In 2010, several relationship managers of a European bank in Singapore left en masse to a rival bank. Prior to leaving the bank, they emailed data from the bank's computer system to their own personal email accounts; they also accessed and printed confidential company data. Nowadays information accessed by such means can easily be gathered from system logs, and recent advances in computer forensics have made it easier to retrieve deleted files. Thanks to such information gathering systems, these employees were subsequently charged in a Singaporean court for the unauthorised access of confidential client data.

Case Study 19 – Generic drug manufacturer in Vietnam infringes process patent of British pharmaceutical company

Background

A British pharmaceutical manufacturer is a market leader in the production of an anti-cancer drug, which it has been exporting to every major developed country for the last 20 years, and also more recently to developing countries, particularly in Southeast Asia.

The active ingredient of the drug was patented (product patent), but the original patent expired 3 years ago. However, a new improved process for making the drug was patented 10 years ago (process patent), and this patent is still in force in various countries, including Singapore, Malaysia, and Indonesia.

Two years ago, the manufacturer found out that a generic manufacturer based in Vietnam was making and exporting the anti-cancer drug to Malaysia, and being sold in these countries for half the price of their own drug. This was having a serious adverse effect on sales.

Case Study 18 – Patent ownership dispute in Southeast Asia (Indonesia)

Background

A Belgian entrepreneur set up a local food processing operation called ‘BE Food’ in Indonesia. One of their plant managers developed an innovation to the existing raw material cleaning process. The Belgian entrepreneur, believing that BE Food could commercialise this process by manufacturing equipment with this innovation, offered a reward-sharing scheme and brought the plant manager to an attorney to discuss future contractual arrangements, as the existing employment agreement was silent on ownership of intellectual property in inventions.

In the meantime, the plant manager secretly instructed a patent attorney to apply for a patent in his own name. The patent was drafted by a local attorney in the Indonesian language (Bahasa Indonesia).

As soon as the Belgian entrepreneur discovered the patent filing, he asked the plant manager to surrender the patent application to BE Food. The plant manager refused.