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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

 

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

Case study 11 - Patent Prosecution Strategy for manufacturing in Vietnam

Background:

An Austrian SME operating in the sport industry, developed a new patentable technology to manufacture sports equipment and was also seeking for a Vietnamese manufacturer. The company was new to IP knowledge and patent application procedure, and therefore needed to understand the best patent application route to protect their product tailored to their needs to internationalise their operations. To pursue it goals, the company also needed to quickly draw and implement a business strategy to protect its idea and to produce in Asia without incurring in major IP risks. Their plan included manufacturing in Vietnam and sell in Europe and other Asian markets and potentially worldwide,

Case study 12 - IP infringement by using confusingly similar marks in Vietnam

Background: 

A Dutch company used its trade mark ‘XXXX-LON’  registered in Vietnam for a wide range of products and services and it entered into a licensing contract with its subsidiary in Vietnam (the Subsidiary), whereby the Subsidiary is authorized to use the trade mark ‘XXXX-LON’ for steel frames and other steel products under Class 06.

The Subsidiary discovered that many companies in Vietnam have been trading and marketing some construction materials similar to their products and called them ‘XXXX-LINE’, which sounded very similar to its trade mark ‘XXXX-LON’.

After investigating, the Subsidiary found out that it was one of its previous Vietnamese sub-contractors (the Vietnamese Company) to have filed an application for registration of the trade mark ‘XXXX-LINE’ for services under Class 35: "Trading in metal sheets" and Class 42 "Processing metal sheets", and marketed their products, including aluminum sheets, steel sheets, steel ceilings, aluminum ceilings and steel frames, as ‘XXXX-LINE’.

Case study 13 - Customs seizures of goods suspected of IPR infringement in Vietnam

Background:

A German company, owner of a trade mark (“XXX”) protected in Vietnam since 1995 for uninterruptible power supplies, suspected that a consignment infringing its trade mark was being shipped to Hai Phong Port in Vietnam. The shipment contained a large amount of uninterruptible power supplies bearing the sign "XXX-UPS’’, imported by a local company (the Vietnamese Company).

Case Study 14 - Design registration in Automotive industry in Singapore

Background:

Mobix Auto (“Mobix”) is a European company specialised in manufacturing parts and accessories for automotive manufacturers. Having achieved considerable market share in its home market and some other European countries, Mobix plans to introduce its products to the South-East Asian market, after learning of the growing demand for vehicles and vehicle components in this region.

Before entering the region, Mobix attends an automotive trade show organised in Singapore to survey the potential markets in the region, and to establish contacts with potential local partners. At the trade show, Mobix comes into contact with Metro Singapore (“Metro”), a distributor of parts and accessories in Singapore and the region.

Case Study 15 - Arguments against descriptiveness rejection of trade mark filling in Cambodia

Background:

A French pharmaceutical company tried to file two trade marks with the Department of Intellectual Property Rights ("DIPR") for goods including cosmetics, soaps, shampoos and perfumes. The company had already successfully registered these two trade marks in more than 15 jurisdictions. The DIPR issued a Notice of Preliminary Rejection of Mark Registration, on the basis that both trade marks were descriptive, therefore asking the applicant to provide supporting arguments and evidence to show that the marks were distinctive.

Case Study 16 - Seizure of counterfeit goods in Laos

Background:

A manufacturer of engines for agricultural activities had its trade mark duly registered in Laos. Lately, then found out that counterfeit products bearing its registered trade mark were being commercialized in several local retail stores. The issue was only discovered when the company received complaints about the product quality from buyers who mistakenly bought the counterfeit products which they thought were originals. This affected the company’s business and brand reputation.

Case Study 17 - Non-use of registered trade mark in Thailand: using a survey to determine non-use

Background:

Liwayway Marketing Corporation ("Liwayway") is the owner of a trade mark that was registered with the Thai Registrar of Trade Mark in various classes. However, its trade mark was possibly being expunged due to the request of Oishi Group Public Company Limited ("Oishi"), a Thai exporter of products such as aerated water, fruit juices, ready-to-drink green tea and carbonated drinks. Among others, the grounds put forward by Oishi was that there had been non-use of the mark for a period of at least 3 years up to 1 month before the expungement action ("Statutory Period").

Case Study 18 - Appealing against a descriptiveness refusal in trade mark filling in Thailand

Background:

“Company A” in Thailand submitted a trade mark application to the Thai Department of Intellectual Property (DIP) to register the mark “TMB Make THE Difference” for banking services in Class 36. After examining the application, the DIP accepted to protect the mark, but with the phrase "Make THE Difference" disclaimed for being descriptive. The company was reluctant to disclaim their right over the phrase "Make THE Difference" as they considered it an important slogan in the company’s branding strategy.

Case Study 20 - Copyright enforcement actions against illegal downloading in Singapore

Background:

Two Hollywood studios, “Voltage Pictures” and “QOTD Film Investment”, are the right owners of the two movies “Father & Daughters” and “Queen of the Desert”. They have been subject to serious copyright infringement carried out by illegal downloaders in Singapore for quite some time.

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.