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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 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 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 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 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 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 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 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 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 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.