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Manage your Intellectual Property in South-East Asia

Case Studies

Click on the topics on the right to learn about the DOs and DON'Ts of Intellectual Property in ASEAN by viewing the experiences of other European small and medium-sized enterprises. If you have an IP case which you would like to share with us please email question@asean-iprhelpdesk.eu

 

South-East Asia IPR SME Helpdesk Case Studies 2015-2018

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 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 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 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 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 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 7 - Trade Secrets protection in Thailand

Background:

Important amounts of investment are made in research and development to improve designs, techniques, and processes by SMEs to reduce production costs and increase sales. Trade secrets disputes often arise against employees or former employees and business partners and is a frequent issue affecting SMEs. However, in relation to Thailand, the Central Intellectual Property and International Trade Court (IP&IT Court), has published that only 66 trade secret cases were brought to the IP&IT Court between 2004 and 2014. Of this limited number of cases, the majority had unfortunately no positive outcome for trade secrets’ owners, with the main reason for the court to dismiss a plaintiff’s claim, being the absence of appropriate measures to maintain trade secrets. Key grounds to support a claim of trade secrets theft is indeed represented by the proofs of the existence of a trade secret by demonstrating that the information is protected by measures to maintain its secrecy. Failing to provide certain evidence in this respect, will lead to lose the case. 

Case Study 8 - Contribution of know-how in Vietnam

Background:

A European company is willing to establish a Joint Venture with a local partner in Vietnam where the investment in the capital will be composed of cash from the Vietnamese partner and know-how and cash from the European company. The European company has developed a specific know-how in treating and cleaning systems which enable to minimise the use of water and detergents. 

The parties enter into negotiations in relation to the Joint Venture Agreement and have reached a point in which it became difficult to assess the exact value of the contribution of know-how since the process was and could not be patented in Europe nor in Vietnam. The parties could not find an agreement on the contribution and the European company was worried of disclosing further information at this stage.

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. 

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”).

ASEAN IPR SME Helpdesk Case Studies 2013-2015

Case Study 1 - Prior registration of a trade mark in Southeast Asia

Background

A European electronics producer with an internationally recognized brand for personal computers (BHT) is interested in setting up business in South East Asia. Upon carrying out their initial research into one of the ASEAN markets, they soon discovered that a prior registration for their brand existed in that market, having been submitted by a local party 5 years before. The local registration covered stereo systems and electronic radios. The European company was advised by a local attorney that the trade mark registration by the local party would effectively block any application put forward by the European company.

Case Study 2 - Trade mark dispute with local partner in Southeast Asia

Background

An up-and-coming European fashion boutique chain was approached by a local business to open an outlet in an ASEAN country. The local company requested a 5-year exclusive dealership agreement with the European boutique chain.

The licence was granted exclusively for the use of the trade mark amyclick with the European boutique’s logo. In addition, the local outlet committed itself to exclusively selling the amyclick branded clothing which was to be supplied by the European company only. The local outlet agreed that no other brands would be sold in their store.

Case Study 3 - Discovery of counterfeit versions of a European product in Southeast Asia

Background

A small British company produces a very successful line of clothing under the brand name SHO.

The British company distributes its clothing locally in ASEAN through a dealer. The dealer reported to their British partner that they had become aware of cheaper ‘fake’ SHO branded clothing becoming available on the local market. The British company hired investigators to look into this.

Upon carrying out a market survey, the investigators discovered that several shops were actually selling counterfeit SHO clothing.

Case Study 4 - French jewellery manufacturer in Indonesia - register design or copyright?

Background

A small branch of a French jewellery manufacturer with activity in Indonesia distributes a successful line of rings, bracelets, and earrings designed in France. New collections are available on the market every 6 months. Due to the relatively long period of time needed to register an industrial design in Indonesia (about 24 months to 36 months) and high registration fees, the company decided not to apply for design protection for its collections in Indonesia.

At the same time, the company has become aware of cheaper imitations of its jewellery becoming available on the Indonesian market under a different brand.

Case Study 5 - Registering your domain name in potential future markets in Southeast Asia

Background

A Swedish producer of internet games is a market leader in the development and promotion of online social networking games for teenagers. The company has millions of teenage internet users worldwide, including in Southeast Asia.

In 2010, the company registered the names of their most popular games under .cn (China), .kr (Korea) and .jp (Japan), as those were considered the primary Asian markets for their games. It neglected to register its names in the ccTLDs of Vietnam (.vn and .com.vn), Singapore (.sg and com.sg), and Laos (.la).

Case Study 6 – Patent dispute in Southeast Asia

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, but the original patent expired 3 years ago. However, a new improved process for making the drug was patented 10 years ago, 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 7 – 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 8 – 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 9 – 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 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.