South-East Asia IPR SME Helpdesk

Case Studies

Case Study 15 – Trade mark infringement / ’passing off’ case in Malaysia

Background
A British manufacturer of biscuits has been selling cookies in Malaysia for more than 20 years, and has had a registered trade mark 'ChipsMore' for these goods during that time.

Two years ago a Malaysian company started manufacturing and selling cookies under the brand 'ChipsPlus.'

Advice
The British company was advised that they could sue the Malaysian company for trade mark infringement and also 'passing off', which can be used to enforce unregistered trade mark rights and exists in Malaysia as it is a Common Law country.

Case Study 14 – Thailand Trade Mark Practices

Background
A Spanish apparel company successfully launched branded-clothing shops in Indonesia, and next planned to open a new branch in the south of Thailand. The company's owner was aware of the value of a trade mark, and had already registered his trade mark in Indonesia for his goods in International Class 25 for 'clothing', 'headgear', and 'footwear.'

From his experience of registering his trade mark in Indonesia, he already knew that the registration process can take up to two years. Thus, as soon as he started thinking of opening his branch in Thailand, he filed a trade mark application in Thailand. The designated goods for this application were the same as those in the Indonesian trade mark registration (i.e., 'clothing', 'headgear', and 'footwear'). However, his Thai trade mark application was rejected by the Registrar for the reason that the description of the goods was too broad under the Thai trade mark registration practice.

Case Study 13 - Trade Mark Squatters in Indonesia

Background
A leading Italian fashion company is engaged in the retail clothing and apparel business. The Italian company's operations are extensive, and it has numerous stores throughout the Southeast Asian region. The Italian company owns several registered trade marks that protect its brands, including the trade mark 'AAA', which is registered in many countries worldwide. Indonesia is among these countries, where the mark is registered under the goods and services category in Classes 18, 25, and 35.

The trade mark registration in Indonesia under Class 25 was made in 2008. Given the proper registration, the Italian company was certain that no identical or deceptively confusing similar marks would be allowed to be registered in the same categories of goods and/or services.

It seems, however, that the trade mark examiner in Indonesia has less stringent examination criteria when comparing similarities between applied-for marks and prior-registered marks. A mark identical to 'AAA' with respect to the category of goods in Class 25 was applied for by a local individual in Indonesia in 2010. This was then published in the Trademark Gazette to allow for any opposition by third parties at that time, within the deadline to oppose.

Case Study 12 – 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.

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 – 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 09 – 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 08 – 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 06 - 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.