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Manage your Intellectual Property in South-East Asia

Case Studies

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.

Case Study 17 – Importance of specifying copyright ownership in employment contracts (Indonesia)

Background

A database formula which calculated land use in the mining industry was jointly developed by staff of a European structural engineering company based in Indonesia and one of its former employees. However, the former employee in question registered copyright of the database formula after it had been jointly developed and put to first use by the European company.

Case Study 16 - On-going Partner and Employee Due Diligence (Singapore)

Background                                           

A European craft beer company wishes to open a bar in Singapore.

 

Action taken

The European company decides that it will simply license the Singaporean partner to use its trade marks and sign up to a written one-year exclusive distribution deal. It allows the partner to register a local company which incorporates its business name and trade marks, to register its trade marks in Singapore, and to register a local domain name.

Case Study 14 – Trade Mark Opposition Appeal in Singapore

Background

Company A is a media company in Singapore with commercial interests in television, radio broadcasting and print publishing. The company operates an English news channel and is the registered proprietor of the ‘HHH’ Mark in Class 35 (Advertising; Business Management; Business Administration and Office Functions) of the Nice Trade Mark Classification System. Company B is a media and entertainment company which provides direct-to-home satellite television services in Malaysia and Brunei, amongst others. Company B applied to register a mark, the ‘BBB’ mark, which was allegedly similar in design to that of Company A, who then relied on sections 8(2) (b) and 8(3) of the Trade Marks Act to oppose Company B’s application. However, the Trade Marks Registrar concluded that there was a low likelihood of confusion between the marks. Company A then appealed to the High Court against the Registrar’s decision.

Case Study 13 – Similarity of Goods & Services: Trade Mark Registration in Vietnam

Background
A well-known German company, a producer and distributor of eyewear, sunglasses and protective helmets, applied for trade mark protection under the Madrid system for its brand ‘X’ in 2010. The registration was applied for ‘goods & services’ in international trade mark classes 6-20, 35-37, and 39-41 (these categories indicate the type of product and must be used when filing for trade mark registrations internationally). Following the application, the brand ‘X’ was successfully registered in many countries worldwide. One of the designated countries was Vietnam.

Case Study 12 – The Importance of Registering your Trade Mark in the Philippines

Background
In 1994, the German company Birkenstock Orthopaedie Gmbh & Co., filed several trade mark applications for its mark ‘BIRKENSTOCK’ and its variants in the Philippines. To its surprise, Birkenstock learned that its ‘BIRKENSTOCK’ trade mark was already registered to a Philippine company called Philippine Shoe Expo Marketing Corporation (Shoe Expo).
Birkenstock quickly filed actions for cancellation against the registered mark. While the cancellation case was pending, Shoe Expo failed to file the required 10th year Declaration of Actual Use (DAU). Failure to file the DAU results in the trade mark registrations being deemed withdrawn. Because of this, the cancellation action filed by Birkenstock was dismissed for being moot and academic, paving the way for its own trade mark applications to be allowed. Shoe Expo, not deterred by the cancellation of its registration, filed oppositions to the trade mark applications of Birkenstock, on the grounds that it had been using the mark ‘BIRKENSTOCK’ for over 16 years in the Philippines and that it had re-applied for said trade marks, and had also obtained copyright registration for the word ‘BIRKENSTOCK’ in 1991.

Case Study 11 – Thailand: Suing Trade Mark Board for Unlawful Decision

Background

A manufacturer of various safety products including disposable respirators (i.e., masks for protecting against dust and pollutants), traffic cones and reflective tapes, applied for registration of the trade mark VFLEX in respect of disposable respirators in Class 9 with the Thai Trademark Office. The trade mark Registrar rejected the application, saying that the mark was descriptive of the goods it was intended to cover because the letter V was a letter not shown in a stylised form and the word FLEX meant ‘bendable or flexible’ which, when used in respect of a disposable respirator, directly described the product (the Registrar explained further that a disposable respirator must be adjusted and bent along the contour of a human face.)

Case Study 10 – Unjust Appropriation of Famous Trade Mark by Local Firm in the Philippines

Background

A famous French culinary school tried to register its 1895 trade mark LE CORDON BLEU in the Philippines but it was opposed by a local entity which was owned by one of the graduates of the same school. The graduate started using the same mark in the Philippines long before the French school tried to register but never applied for trade mark registration. The local entity argued that it was the first to use the mark in the Philippines, thus it should be entitled to register the mark ahead of the French school. Subsequent to filing the opposition, the local entity filed its own trade mark application covering the same mark.