About The South-East Asia IPR SME Helpdesk
1. What is the South-East Asia IPR SME Helpdesk?
The South-East Asia IPR SME Helpdesk (Helpdesk) is a project co-funded by the European Union to support European Small and Medium-sized Enterprises (SMEs) in protecting and enforcing their intellectual property rights (IPR) in South-East Asia. The Helpdesk provides first-line advice and information in relation to Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, the Philippines, Singapore, Thailand and Vietnam.
Helpdesk’s sister projects include:
- China IPR SME Helpdesk, covering Mainland China, Hong Kong, Macao and Taiwan
- Latin-America IPR SME Helpdesk, covering Argentina, Bolivia, Brazil, Chile, Colombia, Costa Rica, Cuba, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Uruguay and Venezuela
More details can be found on our website: www.ipr-hub.eu
2. What kind of services can the South-East Asia IPR SME Helpdesk provide?
The Helpdesk provides the following services, free of charge:
- We reply to IP-related enquiries within three business About the South-East Asia IPR SME Helpdesk 3 Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk - May 2016 days. Please send your questions to firstname.lastname@example.org.
- You can participate in our on-site trainings organized across the EU and the countries listed in Q2. You can also join our webinars (online training) in front of your computer. For our events calendar, visit www. ipr-hub.eu website.
- You can also download practical IP guides focusing on general and industrial IP issues as well as selflearning tools from our website.
All our services are free of charge for SMEs and SME intermediaries from the European Union.
The Helpdesk only provides support and advice related to IPR. For other questions, you can contact the organisations enlisted in our Signposting Directory. For a comprehensive list of IP offices and business support organisations, browse the Signposting Directory on the IPR Hub website www.ipr-hub.eu.
3. What is an SME?
Following the definition of a Small and Medium-sized Enterprise (SME) by the European Commission, the main factors determining whether an enterprise is a SME are that they have fewer than 250 staff and maximum 50m EUR turnover or maximum 43m EUR of balance sheet total. These boundaries apply to individual firms only. A firm that is part of a larger group may need to include staff headcount/turnover/balance sheet data from that group too
4. How can I reach you for advice?
The Helpdesk operates an Enquiry Helpline that can be reached via: email@example.com or the following link: http://www.southeastasia-iprhelpdesk.eu/content/ask-question. Upon contacting us, you will receive a reply within three (3) working days. You can also call us at +84 (8) 38258116, from 9am to 6pm, Vietnam Standard time. You can also schedule an appointment for one-on-one consultations at our office in Ho Chi Minh City, Vietnam.
Address: European Chamber of Commerce in Vietnam (EuroCham), Room 2B, 15th floor, The Landmark, 5B Ton Duc Thang, Ben Nghe Ward, District 1, Ho Chi Minh City, Vietnam Tel: +84 (8) 38258116 Email: firstname.lastname@example.org
5. Does the Helpdesk provide specialized services, such as registering my IP or preparing a contract for me?
The project provides first-line advice and resources to help you navigate the IP system in the countries listed in Q2, but the Helpdesk does not substitute the services provided by law firms, thus it does not handle registrations, negotiations and other specialized legal services.
The Helpdesk cannot draft a contract for specific cases, but can help you identify key points that you should watch out for or address with your lawyer.
General Questions About IP and South-East Asia
6. What is the ASEAN Economic Community and the IP landscape across ASEAN?
The “Association of Southeast Asian Nations”, or ASEAN, was established in 1967 in Bangkok by Indonesia, Malaysia, the Philippines, Singapore and Thailand. Since then, Brunei, Vietnam, Laos, Myanmar and more recently Cambodia, putting in place what is at present the ten (10) Member States of ASEAN. The goal of the ASEAN Economic Community (AEC) is regional economic integration in ASEAN by 2015. The AEC envisages the following key characteristics: (a) a single market and production base, (b) a highly competitive economic region, (c) a region of fair economic development, and (d) a region fully integrated into the global economy.
It is increasingly clear that different ASEAN countries are at different stages of economic, commercial and legal development. This means that SMEs should not expect the same level of IP protection in all ASEAN Member States. IP is established on a territorial basis and therefore IP protection and enforcement should be sought in each specific country of interest within ASEAN.
7. Are there differences in IP protection in Europe vs. South-East Asia countries?
There are several key differences between South-East Asia countries and European IP laws, but most countries mentioned in Q2 (except for Myanmar) have developed General Questions about IP and SouthEast Asia South-East Asia IPR SME Helpdesk General Questions about IP and South-East Asia 6 numerous IP laws and regulations that are generally in line with international standards. It is important to note that IP rights are territorial, meaning that IP is enforceable in a third country only upon valid domestic registration. It is important to consult with local experts to identify major differences in relation to protection and enforcement
8. What do Intellectual Property Rights (IPRs) mean and what kind of IP types exist?
Intellectual Property Rights are legally enforceable rights that can be used for inventions or other creative works. As per definition of the World Intellectual Property Organisation (WIPO - http://www.wipo.int/about-ip/en/), “IP is protected in law by, for example, patents, copyright and trademarks, which enables people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish”.
Type of IP are: Trade marks, invention patents, utility models (UMs) (or simple or petty patents), designs, copyrights, trade secrets, geographical indications (GIs), new plant varieties, layout designs of integrated circuits and user graphic interfaces (UGIs). However, each SEA country may have a slightly different way of defining and categorising these kinds of IP type.
9. Why is IP important for my business?
IP, as intangible assets, are key to the competitiveness of your business in the global economy. IP is a primary 7 Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk - May 2016 method for securing a return-on-investment in innovation, creativity and reputation and is particularly relevant to SMEs as they internationalise their businesses to non-EU markets. Apart from helping you protect your innovations from competitors, IP assets can also be an important source of cash-flow for SMEs through licensing deals or IP sales. They are also a significant pull-factor for attracting investors.
10. What are the most relevant considerations when planning an IP strategy for entering South-East Asian markets?
A clear vision of IP strategy and how to use IP strategy to support development plans can impact a company's growth and prevent loss of revenue further down the road:
- Identify your IP assets to protect;
- Prioritise protection needs accordingly;
- Assess vulnerability of your business asset according to specific countries of interest;
- Register your core IP as soon as possible;
- Think about online protection;
- Collect information on local IP protection and practice and adapt to them; and
- Set aside a reasonable budget to be prepared to enforce your rights if needed.
The Helpdesk can help you identify and protect your core IP assets, such as trade marks, copyrightable materials, patents or designs, and in general how to protect and maximize these assets through contract clauses to support relations with local partners
11. When is the best time to protect my IP?
In most countries listed in Q2 (except for Myanmar, where IP registrations are not yet in place) local registration is necessary to protect your IP as the country operates a first-to-file system. Hence, an IP protection and management strategy should be put in place at least a year beforehand (in order to finish the necessary IP registrations; without registration, you cannot enforce your rights in most cases), if your company has short to medium-term plans to do business in/with these third countries.
For the protection of your rights, it is highly recommended that you register your rights before you attend trade fairs, meet with potential partners or start to sell online.
Once you enter the market the cost and risk becomes higher and you may have fewer preventative options.
12. Can I work on the registration myself or do I need to hire a lawyer and where can I find a lawyer to help me with managing my IP?
Foreign applicants without residency or place of business in the countries in South-East Asia are generally required to submit trade mark applications to the relevant Intellectual Property Offices through a local trade mark agent. The applications are required to be in the official language of the country. Brunei, Cambodia, Malaysia, The Philippines and Singapore can accept applications in English language.
The Helpdesk – as a service with public character – would 9 Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk - May 2016 not be able to provide you with a single recommendation of IP lawyers/firms, but it has developed a list of External IP Experts located in Europe and the target countries who co-operate in developing the Helpdesk’s activities and who can be contacted by you independently. The list of the IP External Experts is available on the project’s website. We strongly recommend that you hire a lawyer with competence and experience in handling IP cases in the country of interest. You can also find additional tips in the Helpdesk’s “How to find the right lawyer” guides available for downloading from the project’s website.
13. What is a trade mark and how can it be protected?
A trade mark is a sign that serves the specific and primary purpose of identifying the origin of goods or services, thus allowing the consumers to distinguish goods or services of one producer from those of another. The sign may be composed of words, devices, letters, numerals, three-dimensional signs (shapes), combinations of colours, sounds or any combinations of the above. Threedimensional signs (shapes) are registrable in Cambodia, Malaysia, Singapore, Thailand and Vietnam, while sounds or smells are generally not recognised across SouthEast Asia. Relevant laws provide a number of common circumstances under which a mark is not eligible for protection, such as when it is identical with or confusingly similar to national flags or emblems, or when it could cause misunderstanding or confusion as to the origin, properties, quality, or other characteristics of the goods or services.
Trade marks are generally protected through registration, under specific legal systems, trade marks can enjoy South-East Asia IPR SME Helpdesk General Questions about IP and South-East Asia 10 protection based on first use in a specific country. However, registered trade marks do enjoy stronger protection and enforceability, therefore registration is always recommended.
14. What is a class identification of the goods and/or services?
A trade mark registration is performed in a specific area - always in connection with certain products and/or services offered by its owner. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is an international classification of goods and services - it groups goods and services into thematic classes for the purposes of the registration. The heading of each class indicates the products or services included. The complete Nice Classification available at http://www.wipo.int/classifications/nice/en/
15. Do I need to register my trade mark in South-East Asia?
In order to enable you to be owner of the trade mark in the countries of your interest in South-East Asia, you need to register it in those countries. A European-registered trade mark is not protected in third countries if it is not registered there as well. Remember that the majority of countries in South-East Asia operate a first-to-file system, meaning that the person or company first submitting a valid application will own the mark. A trade mark does not generally have to be in use before it can be applied for or registered, although all applications for registration should be on the basis that there is existing use or a clear intention to use the mark in the course of trade. The 11 Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk - May 2016 trade mark registry office may require proof of use whilst examining the trade mark application.
16. How important is it to adapt the trade mark to local scripts in South-East Asia?
As the registration of a trade mark in original Roman characters does not automatically protect the trade mark against the use or registration of the same or similar trade mark written in local scripts used in particular countries of South-East Asia, such as Vietnamese, Tamil, Thai, Lao, Burmese or Khmer, it is highly advisable to also register a version of your trade mark in the script used in the South-East Asia country of interest. Furthermore, if there is no existing character name for your brand in a local script, it is very likely that one will be adopted by local consumers either by way of translation or by transliteration, and not necessarily with the connotations or image that you would wish to convey.
17. Are there any International or Regional Trade Mark Registration Systems within the ASEAN Region?
In order to be protected, trade marks should be filed and registered in each ASEAN member country that you intend to do business in. However, it is worth noting that ASEAN members have committed to implementing the Madrid Protocol (an international system of registration administered by the International Bureau of the World Intellectual Property Association or WIPO) by 2015. Under this treaty, it is possible to file a single application in order to seek trade mark protection in multiple member countries. So far, the following ASEAN countries have implemented the Madrid Protocol: Cambodia, Lao People’s South-East Asia IPR SME Helpdesk General Questions about IP and South-East Asia 12 Democratic Republic, the Philippines, Singapore and Vietnam.
18. My trade mark is already registered in the country of my interest by another person or entity. What can I do now?
‘Bad faith registrations’ are a common issue in many countries of South-East Asia and can affect your business in those markets. It is possible to acquire the registered trade mark under certain circumstances, depending on the particular case.
- You can try to buy back the trade mark and negotiate a price with the current owner. It is recommended that you use an intermediary for the negotiations and have a thorough assessment of the adequate price.
- Additionally, you should consult with a specialised lawyer in the country of your interest to evaluate, according to the local law, whether you can cancel the trade mark acquired in bad faith.
- i) With a cancellation request already filed, it might be advisable to negotiate the purchase of the trade mark at a low price. If the asked price would be still too high, you may decide to wait until the cancellation procedure will be finished, but in the meanwhile, you shall refrain from commercialising or importing your goods into that country to avoid incurring problems with customs or in litigations.
- Another basic requirement of the majority of trade 13 Intellectual Property Rights in South-East Asia: FAQ to the Helpdesk - May 2016 mark laws is the obligation to use the trademark following registration. There is a requirement relating to the duration of the period of use, which varies according to each country and is generally between three (3) to five (5) years in the region. Cancellation procedures are more costly and time-consuming than registering the trade mark, thus an early registration of your trade mark is strongly recommended.
19. What is a Patent and how can it be protected?
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. A patent prevents an invention from being commercially made, used, distributed or sold without the patent owner's consent. Patents shall be protected by registrations.
20. What are Copyrights and how can they be protected?
Copyright is a legal term used to describe the rights that creators have over their literary and artistic works. It includes ‘moral rights’ which are personal and cannot be waived, licensed or transferred and ‘economic rights’ which give you the exclusive right to exploit the work for economic gain, including the right to reproduce, distribute, perform and use other means to exploit the work. Copyright protects only the tangible expression of an idea (a ‘work’), not the idea itself. Copyrights is automatically established upon creation, however, in several countries voluntarily registration is possible.
21. What are Trade Secrets and how can they be protected?
In order for information to be a trade secret, it must be 1) non-public - it must not be known by the general public or by competitors; 2) have actual or potential commercial value - it must give the owner a competitive advantage or be capable of generating economic benefit; and 3) guarded by confidentiality measures - the owner must take reasonable measures to protect the confidentiality of the information.
Prevention is the key to protection. Once a trade secret is disclosed, the damage is already done and it is often very difficult to recover its value, even if you succeed in litigation. You are advised to:
• Identify your trade secrets;
• Document trade secret protection measures you take, in case of a dispute later on. Implement a trade secret protection policy within your company, making sure your employees understand your expectations. Include confidentiality clauses in the contracts with employees and sign non-competition agreements with key employees that have access to the company’s trade secrets; and
• Complete non-disclosure agreements before entering into negotiations with third parties.
22. What is Know-how and how can it be protected?
Know-how is another term for practical knowledge on how to accomplish something. In the context of IP, know- how can be considered an economic asset; a component in the transfer of technology in national and international environments, co-existing with or separate from other IP rights such as patents, trade marks and copyright. . When independent, know-how is often not subject to registration and therefore can be protected in a similar way to trade secrets.
23. What are Geographical Indications (GIs) and how can they be protected?
GIs are signs used on products that have a specific geographical origin and possess qualities or a reputation that are reliant on that origin. The qualities, characteristics or reputation of the product should be directly related to the place of origin. A geographical indication enables those who have the right to use the indication to prevent its use by a third party whose product does not conform to these specific standards. GIs are protected in different countries and regional systems through a wide variety of approaches and often use a combination of ways, including a special regime of protection and/or in combination with trade mark protection.
24. How to use contracts to protect my IP?
When doing business that involves your IP, there are two key points to bear in mind: always use written contracts wherever possible and ensure that, where relevant, your IP is covered in those agreements. Tailor your IP contracts to suit the IPR you are protecting, and make sure you include specific detail in the contract’s key provisions. IP usually appears in the following types of agreements:
1) Non-Disclosure Agreements (NDAs) and Confidentiality Agreements;
2) Memorandum of Understanding (MOU);
3) Employment agreements;
4) Agency agreements;
5) Trade mark/patent license and technology transfer;
6) Franchise agreements;
7) Distribution agreements;
8) Manufacturing agreements;
9) Joint Venture agreements;
10) IT-related agreements; and
11) Selling/assigning your IP.
25. How does Brunei’s IP legal framework compare to international standards?
Brunei’s legal system is based on English Common Law. Since the year 2000, Brunei has passed various legislations on trade marks, industrial designs, copyright and patents.
Brunei’s IP legal system is compliant with international standards, as well as with international agreements and treaties administered by the World Intellectual Property Organisation (WIPO). It is a member of a number of conventions including the Paris Convention, the Berne Convention, the Patent Cooperation Treaty (PCT) and the Hague Agreement Concerning the International Registration of Industrial Designs. Brunei is also a signatory of the TRIPS agreement. Brunei is currently in talks to join the Madrid Protocol hopefully by the end of 2016.
In terms of registered rights, Brunei operates under a ‘first-to-file’ system, meaning that the first person or entity to file an IP right in the Bruneian jurisdiction will own that right once the application is granted. This applies to patents and trade marks.
26. How trade marks are protected in Brunei?
Trade marks qualify for protected registration as provided by the Trade Marks Order, 1999. A mark is categorized either as a trade mark, service mark, collective mark or certification mark.
• A ‘trade mark’ is defined as any visually perceptible sign capable of being represented graphically and which is capable of distinguishing goods or services of one producer from another.
• A trade mark may also be regarded as a service mark in scenarios where there are no goods on which to place the mark. In this case the mark would be placed, for example, on the vehicles used.
• A mark that distinguishes the goods or services of members of an association is called a ‘collective mark’.
• A ‘certification mark’ is defined as a mark indicating that the goods or services in connection with it are certified by the owner of that mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
27. How can I enforce my IP rights in Brunei?
In the case of your IP assets being infringed in Brunei, there are three main avenues of enforcement which you can consider; civil litigation, criminal prosecution, and customs seizures. Although judicial proceedings in IP are uncommon in Brunei, a private settlement reached via legal professionals may be more effective and should be considered as a viable option. Legal professionals usually issue cease and desist letters to infringers. Thereafter, negotiations commence between the professionals and infringers. If nothing is achieved then civil action is taken.
Court hearings may take up to 2 years, although court hearings have recently become more efficient and the trial dates may be given within 12 to 15 months. However, if the infringer responds to the initial cease and desist letter, the process of settlement is much faster.
Criminal Prosecution is usually considered the most cost effective enforcement route available to IP right holders as the legal expenses of prosecution are borne by the Government as the prosecuting party. It is also the best route to take for actions against infringers on a commercial scale and when infringement involves dangerous goods. Criminal prosecution is brought by the Attorney Generals Chamber and is thus free.
Administrative actions are not available in Brunei. No governmental body or enforcement authority has been set up to apply administrative measures against IP infringement.
28. How does Cambodia’s IP legal framework compare to international standards?
Cambodia was approved for WTO membership in September 2003. However, due to internal political difficulties, Cambodia did not join the WTO until July 2004. Prior to its WTO accession, Cambodia began to take steps to ensure that its IP laws were in compliance with its WTO member commitments. However, Cambodia’s IP laws are not yet in full compliance with the country’s WTO commitments. Although Cambodia’s IP laws are in the early stages of development, there are fairly efficient procedures in place for registering and enforcing major IP rights (trade marks, patents and copyright). On 5 June 2015, Cambodia also became party to the Madrid Protocol accessing the ‘Madrid system’ which makes it possible to protect a mark in a number of countries by obtaining an international registration that has effect in all of the contracting parties.
There is still no regulation in place in the field of trade secrets. However, a new piece of legislation is currently being drafted.
29. How are patents, utility models and designs protected in Cambodia?
The registration procedure for patents, utility models and industrial designs in Cambodia is very similar. Cambodia employs the first-to-file system for all three, meaning that if two persons have created the same invention independently of each other, the person whose application has the earliest filing date or, if priority is claimed, the earliest priority date is granted the patent, utility model certificate or industrial design certificate. Here the priority date is the date when the application was first made for the patent, utility model certificate or industrial design certificate in a foreign country. The period of priority starts from the filing date of the first application (the day of filing will not be included in the period) and is then 12 months for patents and utility models, and 6 months for industrial designs.
Certain inventions and designs however, are excluded from patentability and protection as utility models or industrial designs. For example; inventions and designs that would be contrary to public order or morality and harmful to human, animal or plant life, that would seriously compromise the environment or inventions and designs otherwise “prohibited by law”. It should be noted that the Cambodian Ministry of Industry, Mines and Energy has the right to allow a government agency or a third party to exploit an invention, utility model, or industrial design on certain grounds of public interest. Such grounds include, for example, national security, nutrition, health and development. The Cambodian government may revoke patents, utility model certificates and industrial design certificates, and/or shorten the time of protection.
30. Is there any protection for trade secrets in Cambodia?
Cambodia has not yet adopted a specific law on trade secrets. However, a draft law is currently being negotiated.
Until Cambodia has adopted the Law on Trade Secrets and Undisclosed Information, trade secrets may be protected under other laws. For example, to maintain information in employment or other contractual relationships, a non- disclosure agreement may be used and enforced by the Contract Law of 1998.
31. What is the suspension of customs clearance and how to apply for it?
Any counterfeit goods may be registered. Counterfeit goods may include any goods/packaging that bear, without authorisation, a trade mark which is identical to a registered trade mark, or goods/packaging which cannot be distinguished from a registered trade mark. However, it should be noted that border control measures are only available in clear-cut cases of infringement.
The customs authority will suspend clearance of the goods for a defined period and this can not be extended for more than 10 working days. Moreover, if the applicant wishes to destroy the counterfeit goods, civil court proceedings must be initiated within 10 working days of suspension of the goods because the customs authorities may only destroy counterfeit goods with a court’s approval. The customs authority will release the goods if the applicant does not initiate court proceedings.
An application for suspension of customs clearance should be submitted to the customs authority and must contain:
• A statement showing prima facie evidence (evidence which supports the claim) of counterfeit;
• A description of the goods;
• Proof of trade mark registration; and
• The applicant’s information.
Applications and supporting documents may be in Khmer or English (documents in other languages are accepted if translated into Khmer or English).
There is no set official cost, however the authorities may, on a case-by-case basis, require the applicant to pay a security deposit or provide other assurance for the suspension. The customs authorities must notify the applicant within 10 working days from the submission of the request if the application has been granted, rejected or reserved for further consideration.
32. How does Indonesia’s IP legal framework compare to international standards?
Indonesia’s IP legislation is now comprehensive, covering all aspects of IP protection in accordance with international standards, however enforcement mechanisms still need to be strengthened. Indonesia is a member of the World Trade Organization (WTO), and has ratified the Agreement on Trade-related Aspects of Intellectual Property (TRIPs Agreement). Indonesia has also ratified the Paris Convention.
Indonesia has also implemented IP laws and regulations to strengthen IP protection in the country. For example the Copyright Law, which came into effect on 16 October 2014, provides a range of new provisions to improve copyright protection and new liabilities and penalties for infringers.
33. What is meant by bad-faith trade mark registrations and how common is this issue in Indonesia?
Bad-faith registrations exist where a third party, which is not the legitimate owner of the trade mark registers the mark in Indonesia, thereby preventing the legitimate owner from registering it. Trade mark piracy, as a result of bad-faith registration is a serious and frequent problem in Indonesia. Many bad-faith registrations are filed even by the authorized distributors contracted by the trade mark owner. Thus, you should consider registering your most strategic trade marks in Indonesia even before commencing business there.
34. Is a standard patent the only way to protect my invention in Indonesia?
No. Inventions can also be protected by simple patents and by trade secrets if you do not disclose any of its information, i.e. keep them as a secret.
Simple patents only apply to products and tools, and not for technologies, which are generally protected as standard patents. These products or tools should be novel and applicable to the industry in question. There are also no strict requirements for an inventive step with a simple patent. The process for obtaining a simple patent is generally shorter than standard patents, however there is a reduced term of protection (10 years from the filing date).
In order to secure trade secret protection, the invention must comply with three (3) general standards: the information is not generally known to the public (confidential), it has an economic value (because it is kept secret), and is the subject of reasonable efforts by the rightful holder of the information to maintain its secrecy (through confidentiality agreements where applicable). There is no need to apply for registration in order to obtain trade secret protection because the regulation itself already confers the protection if the information fulfils the aforementioned conditions. In a trade secrets case it is necessary to prove that the trade secret has been taken by the suspected party. Proving this might be difficult as litigation proceedings in Indonesia are not equipped with a procedure to uncover relevant evidence.
Publishing an invention may also be an effective market strategy for protection particularly in cases where you do not need to have exclusivity. It is the cheapest option and it has the advantage of blocking others from getting a patent on the same invention. However, remember to take into account that you will be disclosing your innovation to potential competitors.
35. An employee from the Indonesian branch of our company wrote a user manual for a product we are about to commercialize in Europe. Who owns the copyright to the manual, the author or the employer?
In accordance with Indonesian law and contrary to most European legislations, the copyright for works created by an employee, even in the course of employment, do not automatically belong to the employer. The ownership regime of the works created in the course of employment will be regulated within the employment contract you establish with your employees.
36. What are the possibilities that exist in Indonesia regarding the enforcement of my intellectual property rights there?
In Indonesia there are two main IP enforcement routes: civil and criminal enforcement.
In the case of criminal enforcement, trade mark, patent and design infringements are complaint-based crimes. A formal complaint with the police must be filed before action can be taken. Copyright infringement is currently a non-complaint-based crime, although according to the amendments proposed to the Copyright Law it will soon fall under the category of a complaint-based crime. Currently, the police may take copyright actions without a formal complaint from the rights holder. Criminal raids may cost between EUR 8,000 to EUR 19,000. Because of the high costs, raids should not be considered as routine for any IP owner, but should be reserved for targets which would generate maximum publicity if raided. Indonesia’s IP laws have provisions for maximum fines and prison sentences.
Civil litigation is likely to be more expensive than carrying out a criminal raid. IP rights owners usually rely on criminal raids to stop infringement, and then negotiate for civil statements in return for not proceeding further with the case. Good evidence preparation is essential if you decide to go down the route of civil litigation. This may involve surveys, investigator reports or testimonies, video or tape recording. Foreign evidence will need to be legalised.
Given the relatively weak nature of the enforcement system, in many cases private mediation via legal professionals could be the most effective solution. Another reasonable option would be to send warning letters to the infringers. These methods should be considered as viable alternatives particularly for SMEs with limited budgets.
37. Do Indonesian Customs possess reliable tools for enforcing my intellectual property rights?
Customs Law in Indonesia provide officials with the power to suspend a consignment if they have reason to believe that it contains counterfeit goods. However, in practice they rarely make such seizures. A common reason for this is the lack of provisions in place to allow officials to contact the rights owners even if they have come across a large number of suspected counterfeits. Furthermore, the rights owners can apply to a court to suspend the customs clearance of a specific shipment of goods. In practice, these provisions are quite unrealistic as it means you must be informed of a suspected shipment and able to provide supporting documentary evidence before obtaining an order from the court to issue an official instruction to suspend the shipment. Thus, generally speaking, the courts are still not equipped to respond to time critical cases such as dealing with goods in transit.
38. How does Laos’ IP legal framework compare to international standards?
The Laos IPR legal framework is still in the early stages of development. With guiding decrees on the implementation and interpretation of the IP Law yet to be passed, protection and enforcement of IPR in Laos is still relatively weak. However, the law offers a fairly efficient system for registration of most major IPRs. IPRs in Laos are governed by the Law on Intellectual Property No. 01/NA of 20 December 2011 (“IP Law”), effective from 2012, protecting copyright and related rights, patents, petty patents, industrial designs, trade marks, trade names, layout designs of integrated circuits, geographical indications, trade secrets and plant varieties based on the World Intellectual Property Organization (WIPO) model law and the requirements of the Trade Related Aspects of International Property Rights (TRIPs) Agreement. Major IPR treaties signed by Laos include the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty, and the Convention Establishing WIPO. Laos also became party to the Berne Convention for the Protection of Literary and Artistic Works as well as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks from 7 March 2016, enabling businesses to enjoy international trademark registration.
39. How are trade marks protected in Laos?
Laos also applies the “first-to-file” system for trade marks. Whilst it is not a signatory, Laos applies the Nice Agreement for classification of goods and services. One application is valid for one trade mark but may apply to more than one class of goods/services. Trade mark applicants do not have to show prior use of the trade mark. However, once registered, the trade mark must be used in Laos for the registration to be maintained. To avoid cancellation it must be used within 5 years.
40. Patents, petty patents and industrial designs in Laos: What are the differences?
Patents are the set of exclusive rights granted to inventors or their assignees to exploit an invention for a limited period of time. The IP Law defines patents as the “official certificate from the state organisation issued to protect inventions that are new, involve an inventive step and are capable of industrial application”. An invention is considered new if it has not existed, and has not been disclosed to the public by publication or by use (or by any other means) in Laos or any other country prior to the filing date of the patent application, or prior to the priority date (if priority is claimed). An invention has an inventive step when the invention is not obvious to a person having ordinary knowledge in the invention’s field of technology. An invention is considered industrially applicable if it has use in an industry.
Petty patents are the official certificates issued to protect utility innovations. The IP Law defines utility innovations as “new innovative work[s] derived through technical improvements, which involve simpler [inventive] steps than with inventions”. In order to receive a petty patent, the utility innovation must be new in the sense that it has not been previously known or used in Laos one year prior to the date of the application, or the priority date (if priority is claimed). The requirement as to the inventive step means that the utility innovation must involve a new technical improvement, but the level of the inventive step may be simpler than for patents. Finally, the innovative work must be industrially applicable, having the same definition for patents as set out above.
Industrial design certificates protect products’ special appearance, i.e., the combination of applied art and applied science of products. In order to obtain an industrial design certificate, the design must meet the following requirements: it must be new in the sense that it has not been disclosed to the public by publication, display or other means in Laos or internationally, prior to the filing date, or priority date (if priority is claimed); and must be ornamental. An industrial design is considered ornamental if “it gives a special appearance to the object which the design is applied to or in which it is embodied”.
41. Do Lao Customs possess reliable tools for enforcing my intellectual property rights?
Currently Laos has no formal customs recordal system. However, if the IPR owner knows of a shipment containing counterfeit goods, he or she may inform customs and file a motion by submitting an application form provided by customs and pay a bond or deposit. The IP Law and Instructions on Customs Measures for the Protection of Intellectual Property Rights No. 1970/MOF (“Customs Measures Instructions”) regulates “customs information” measures in Laos. The IP Law allows IPR owners and/or customs to initiate actions for the suspension of customs clearance of suspicious counterfeit goods. The tariff officer and other competent officers at the Lao borders have the right and duty of inspecting the imported goods, and seizing and confiscating infringing goods. So far, most counterfeit goods in Laos have involved food and drugs.
42. How does Malaysia’s IP legal framework compare to international standards?
Malaysia’s legal system is fundamentally based on the English common law. Historically, Malaysia’s intellectual property laws are closely linked to the evolution of such laws in the United Kingdom, and are generally in conformity with international standards, particularly with regard to the amendments made due to Malaysia’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Malaysia’s IP legal system is in line with international standards, and is a member of many international IP treaties. Malaysia is expected to join the Madrid system within year 2016.
43. How do I register a trade mark in Malaysia?
An application form (Form TM5 from the Registry of Trade Marks) should be filed with the Registry of Trade Marks. All documents submitted must either be in English or the national language of Malaysia (Bahasa Malaysia). The application must include the word mark or a representation of the trade mark which you are applying for. You also need to indicate which class of goods or services the trade mark will be for, and a list of the goods and services that the trade mark could cover. Any individual or a corporate entity can register a trade mark. If the applicant resides abroad, an address for service in Malaysia must be provided. While foreign applicants are able to register a trade mark, it is common practice for them to employ a trade mark agent for this purpose. You can appoint an agent to file the application on your behalf by completing Form TM1 from the Registry of Trade Marks and making a statutory declaration of the appointment. Once an application has been filed, it will be examined for registration purposes within 1-2 years from the filing date. If no objection is raised by the examiner, a form calling for the advertisement of the mark will be issued. Once the mark has been advertised in the Government Gazette and assuming no opposition has been filed, the mark will proceed to registration.
The agency dealing with trade marks is the Intellectual Property Corporation of Malaysia. The basic filing fee (excluding agent costs) for trade mark registration in Malaysia starts from MYR 1,020, which is approximately EUR 252.
44. How are copyrights protected in Malaysia?
There is no formal requirement for the work to be registered in order for copyright to be claimed or recognised, however a copyright owner may voluntarily register their copyright in Malaysia. Registration is still advisable for foreign SMEs as the registration can be extremely useful in enforcement proceedings to provide evidence of your ownership.
To claim copyright ownership (i.e. to forewarn infringement), a notice with the symbol © may also be placed in/on the work followed by the name of the owner and the year of first publication.
45. How do I protect my trade secrets in dealings with a Malaysian subcontractor?
For dealings with external parties, it is always advisable to ensure that they sign a non-disclosure agreement (‘NDA’) before any of your confidential information is divulged. The NDA should impose an obligation of confidence on the receiving party to make sure they do not misuse your confidential information. This duty extends even to third party recipients who know or who are expected to have knowledge of the confidential nature of the information.
46. I have reliable information that a shipment of counterfeit goods labelled with my brand is going to be shipped from China to Malaysia next week. What can I do to stop this?
Whilst you cannot directly apply to the Royal Malaysian Customs to detain or seize goods, if you suspect that counterfeits of your products are going to be imported into Malaysia you can apply to the Registrar of Trade Marks to invoke a seizure. You must provide certificates proving that you are the owner of the trade mark, and provide information relating to the goods and the shipment to enable the customs officers to identify the imported goods and detain them.
Further to this application, you would then have to file a civil suit to obtain an order that the goods are not to be released. It should also be noted that where the goods have been seized and you fail to commence civil action within the retention period, the person that owns the seized goods may apply to the Court for an order of compensation against you. If the Court is satisfied that the aggrieved person has suffered loss or damage as a result of the seizure of the goods, the Court may order you to pay compensation to the amount that the Court thinks fit.
47. How do I enforce my IP rights in Malaysia?
In the case that your IP assets are being infringed in Malaysia, there are two key avenues of enforcement which you can consider. Namely criminal enforcement, which is a complaint lodged with the Enforcement Division of the Ministry of Domestic Trade, Cooperatives and Consumerism (ED), or civil litigation. In many cases however private mediation via legal professionals is more effective and should be considered as a viable option, particularly for SMEs who may have budget limitations.
Criminal Enforcement by the Enforcement Divisions (ED) In Malaysia complaints can be lodged with the ED of the Ministry of Domestic Trade, Cooperatives and Consumerism ED for cases relating to counterfeiting or piracy. The ED has the power to seize products and prosecute offenders/counterfeiters. These actions are can be fairly speedy and cost-effective. In brief, the IP right owner would have to provide the ED with documents to prove their rights, an investigation report detailing the infringing activity, and also a letter of complaint.
Enforcement by the ED is also recommended because it allows immediate confiscation of the infringing goods:
• The actions undertaken by the ED can include raids against suspected counterfeiters or pirates where goods were found and seized at the premises. Subsequent to the seizures, the matter will be investigated by the ED to potentially impose a fine on the infringer or for the infringer to be prosecuted in court.
• It should be noted that, as a brand or right owner, you will have to play a supporting role to assist the ED to take action against counterfeiters or pirates. This means that you rely on the authorities to initiate the process and complete the investigation, but you must support them by potentially acting as a witness in court and providing evidence of the seized goods.
In the instance of trade mark or copyright infringement, rights owners also have recourse to file a civil suit in the High Court. An action can be filed against the infringers where a typical result could be an injunction (i.e. a court ordering the infringer to immediately stop their infringing activities) and damages will be paid to the rights owner. Since 2010, the Chief Justice has stated that civil cases should, as far as possible, proceed to trial within nine months from the date of filing. This has helped to minimise the backlog of cases in the courts.
Malaysia has also established IP dedicated courts in six (6) states. The benefit of identifying specific IP courts is to give proper attention to IP cases in the criminal and civil courts, and ensure that the judges hearing such cases are equipped to handle IP issues. Judges can use the reports of technical experts to inform their decisions.
48. How does Myanmar’s IP legal framework compare to international standards?
Myanmar is currently not a signatory to the Paris Convention for the Protection of Industrial Property or any other multilateral trade mark treaty. However, in accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which it acceded as part of its entry into the Agreement Establishing The World Trade Organisation, Myanmar was required to implement and comply with the Paris Convention and the terms of TRIPS no later than July 1st 2013. To date, Myanmar has not complied with its IP obligations under TRIPS, however it is now drafting IP laws in accordance with the TRIPS Agreement by the Office of the Attorney- General. It is working in co-operation with ministries and experts from various sectors and therefore it is looking promising that the new trade mark, patent, and copyright laws will be implemented shortly. Under the Draft Trademark Law, a Trade Mark Office and specialized Intellectual Property Court could be set up in Myanmar.
49. How to acquire a right of property in a mark in Myanmar?
There is presently no law or at least no law in operation regarding IP registrations in Myanmar. Declaration in the prescribed form must be completed by the person purporting to be the trade mark owner for each trade mark. A description of the goods or services in connection with the trade mark and a copy of the mark must be included in the Declaration. A Power of Attorney must be executed (by the same party who signs the Declaration) appointing local counsel to be the attorney of the trade mark owner for the purposes of registering the Declaration(s) at the Registrar of Deeds and Assurances. The registration must be filed in Burmese.
The non-compulsory Cautionary Notice (which may include details of more than one mark) should be published in the national English language newspaper, such as the New Light of Myanmar.
The registration of a Declaration of Ownership of a trade mark by a person, though valuable, will not by itself give him/her a right of property for that trade mark. Thus, as with common law trade marks in other jurisdictions, a Myanmar trade mark needs to have established a reputation or “use” in Myanmar in order to be enforceable. Registration of a Declaration of Ownership and publishing a Cautionary Notice do not give the purported owner of a trade mark the necessary “use” in Myanmar or vest rights of that trade mark.
50. How do I enforce my IP rights in Myanmar?
Currently, IPR infringement cases are handled through a rather complicated judicial system with no less than five levels: the Township, District, State or Regional Courts and the Supreme Court. Therefore disputes are often amicably resolved through negotiations or conciliations.
In Myanmar, since there is no system for the registration of trade marks or for a statutory title to a trade mark, the rights of the parties setting up rival claims to ownership must be determined in accordance with the principle of common law based on prior use rather than first to file.
An effective strategy for enforcement of trade marks and protection of trade names is through criminal action under the Myanmar Penal Code, 1860. The benefit of criminal action is that the Merchandise Marks Act’s forfeiture provisions, which also apply to offences under the Penal Code, assigns significant powers to the court to order the forfeiture of infringing goods, regardless of whether a conviction is actually secured. Criminal action under the Penal Code is possible against a person using a false trade mark or a counterfeit trade mark, making or possessing any instrument for counterfeiting a trade mark or selling goods marked with counterfeit trademarks.
The accused person can be exempted if he/she can proves the following:
• The counterfeiting was undertaken unknowingly due to a lack of knowledge on how to differentiate between counterfeit and genuine products.
• Identifying and disclosing information to the authorities that reveal the main source of the counterfeit goods.
Punishment ranges from a fine to three years imprisonment. The court may also order the destruction of the seized goods.
Even though property in a name or mark is not vested in the “registered owner” through registration in Myanmar, the country’s general law does ensure that no other trader has the right to represent its goods as somebody else’s.
Enforcement is only viable if there is some tangible evidence of damages done to some business or trading activity. It is not necessary to prove a fraudulent motive or representation. The "injured party" is entitled to nominal damages if no actual damage is proved.
51. How does the Philippines’ IP legal framework compare to international standards?
Philippine authorities are aware of the significant challenges that weak IP protection poses to the national economy. Thus, it is a state policy to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. The Philippines has tried to develop an IP legal framework which is compliant with international standards and have also acceded to international agreements, conventions and protocols. Whereas many features of the Philippines IP legal framework are comparable with the protection offered by EU countries there are still some weaknesses. For instance, you will not be able to register Geographical Indications (GIs) in the Philippines as there are no existing regulations for its registration.
52. How do I register a trade mark in the Philippines?
The application in English or Filipino must be accompanied by a request for registration, signed by the applicant or his representative. Individuals and corporate entities/ registered organisations may apply for the registration of a trade mark. Foreigners and non-residents can apply but they must be represented by a duly authorized local agent to whom notice or process for judicial or administrative procedure relating to the application or the registration may be served.
A filing date is assigned to an application upon receipt by the Intellectual Property Office (IPO) of the filing fee and the following:
• An express or implicit indication that the registration of a mark is sought;
• The identity of the applicant;
• Indications sufficient to contact the applicant or his representative, if any;
• A reproduction of the mark whose registration is sought; and
• The list of the goods or services for which the registration is sought.
The above information is indicated in a request for registration of a mark (form provided by the IPO). Among the details that are required to be included are the following: applicant's name, country of residence or incorporation and complete address, telephone; fax; and email; and the name and address of the resident agent or authorized representative.
Applications must be filed with the IPO, addressed to the Director of the Bureau of Trademarks of the Intellectual Property Office of the Philippines.
Online filing is an option but is available only to entities that have accounts with designated local banks.
The basic filing fee for trade mark registration in the Philippines is EUR 34 and upwards but an Agent’s fee is typically around EUR 390. For further information, please see http://ipophil.gov.ph/images/Trademark/ TrademarkFees.pdf.
53. How can I protect the outward appearance of my product in the Philippines?
The outward appearance of your products can be protected in the Philippines as industrial designs. An industrial design is any new or original creation related to the ornamental features of shape, configuration, form, or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colours, which impart an aesthetic and pleasing appearance to the article.
Original ornamental designs or models for articles of manufacture, whether or not they can be registered as an industrial design, are also copyrightable. Thus, an original ornamental work may be protected both under an industrial design registration and under copyright.
54. Should I register copyright in the Philippines?
In the Philippines, works are protected by copyright from the moment of their creation, irrespective of their mode or form of expression, content, quality and purpose. However, registration of copyright is still required in order to establish the rights of the owner and to file against copyright infringers. The author or creator of the work, his heirs, or assignee may apply in person or through a duly authorized representative. Foreigners are permitted to apply for registration but non-residents must be represented by an authorized resident agent to whom communications or process for judicial or administrative procedure relating to the application or the registration may be served. You may, as the owner, file an application for a certificate of registration (in English or Filipino) and deposit copies of the work or works with the Copyright Division of the National Library or with the Intellectual Property Office, submitting the following documents:
• Duly notarised copyright application form and affidavit;
• Two copies of the document subject of the application;
• Certified copy of the notarized assignment document if the applicant/owner is not the author of the work;
• Copy of the business registration certificate of the applicant;
• Power of attorney (POA) in favour of the agent, if applicable (must be accompanied by a board resolution/secretary’s certificate establishing the authority of the signatory to the POA if filing with the Intellectual Property Office of the Philippines).
In addition to the preceding documentary requirements, the applicant must also provide information about the date, place and person/entity that first completed the printing and the date, place and person/establishment where the work was first published or sold in the Philippines.
The typical cost of Copyright registration in the Philippines is between EUR 350 to EUR 380 (including official costs of about EUR 11).
55. How can the Philippines customs help me enforce my intellectual property rights?
The Bureau of Customs (BOC) handles applications for recordal of IPRs and products covered therein. At present, only importations are covered by Customs’ regulations.
Upon the registration of intellectual property rights with the Bureau of Customs (BOCs), an IP holder who has valid grounds for suspecting that products with counterfeit trade marks or pirated copyright goods will be imported, may lodge an application in writing with the Commissioner of the BOC for the issuance of a hold order on the release of such goods.
The IP owner or agent shall file a request in writing to the Commissioner of Customs for the issuance of a hold order on suspected counterfeit goods, providing as much detail as possible regarding the shipment, e.g., the date the shipment is coming in, on what ship, from what port, etc. Such legal protection lasts two years from the date that the recordal is confirmed.
The BOC has the authority to seize goods and there is a registration system for IPRs. In practice, however, the BOC lacks a systematised enforcement programme which means seizure of goods is often inefficient.
56. How does Singapore’s IP legal framework compare to international standards?
The Singaporean IP legal framework is very comprehensive and generally considered to be one of the most thorough in Asia. Singapore is a member of the following international conventions regulating IP matters: the Paris Convention for the Protection of Industrial Property, the Madrid Agreement concerning the International Registration of Marks, the Patent Cooperation Treaty, the WIPO Copyright Treaty, the NICE Agreement concerning the International Classification of Goods and Services, and the Berne Convention for the Protection of Literary and Artistic Works.
57. I am interested in registering my trade mark in Singapore. Should I consider applying for a national registration directly through the national intellectual property office of Singapore or through international registration?
You can apply for a national registration directly through the national intellectual property office in Singapore. However, you also have the possibility to file for registration by way of an international application designating Singapore, as it is one of the few countries in the ASEAN Economic Community that have implemented the Madrid Protocol. Under this treaty, it is possible to file a single application in one member country to obtain trade mark protection in multiple member countries. International applications are administered by WIPO’s International Bureau. This system can be cost effective as it eliminates the need to hire local agents to file local applications in countries of interest.
58. Is there any protection for non registered trade marks in Singapore?
Registered trade marks enjoy additional statutory protection under the Trade Marks Act and the registered proprietor has certain safety nets in place in the event that their trade mark is infringed.
In the absence of a registration under the Trade Marks Act, a mark which is used by a trader in the course of his trade may still be protected under the common law ‘tort of passing off’. The ‘law of passing off’ essentially prevents other traders from unfairly riding on the reputation and success that you have built for your trade mark. Three factors need to be proved before a claim of passing off can succeed: (i) that you have established ‘goodwill’ or a good reputation for your trade mark within Singapore;
(ii) that the defendant has made a misrepresentation to the public that his goods or services are in some way associated or connected with you; (iii) as a result, you have suffered damage to your brand’s reputation. However, the legal remedies available are much more limited than if you have a registered trade mark.
A trade mark does not generally have to be in use before it can be applied for or registered, although all applications for registration should be on the basis that there is existing use or a clear intention to use the mark in the course of trade. The trade mark registry office may require proof of use whilst examining the trade mark application. It is very important to remember that when the trade mark registration is granted in Singapore, you (or your licensee) shall put that mark to genuine use in the course of trade within the period of five (5) years from the date of completion of the registration procedure. Failure to do so may result in your registration being revoked for non-use.
59. What is protected as patent in Singapore?
A patent is a right granted to the owner of an invention to prevent others from making, using, importing or selling the invention without his permission. A patent may be obtained for a product or a process that; gives a new technical solution to a problem, a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work. Unlike most countries in South-East Asia, in Singapore there is only one official type of patent, however, registered designs, integrated circuit layout designs, and plant varieties can be registered separately and are conferred specific protection under Singaporean law (more details are given below).
60. My employee infringed another company’s copyright with my knowledge and permission. Thanks to the infringement, my company obtained a commercial advantage. Who is legally liable in such a case?
If a company is found to have infringed a copyright to obtain commercial advantage, both the company and the employee responsible will be legally liable in Singapore. Penalties for such an offence include a fine and/or a term of imprisonment. Unlike other countries in South-East Asia, Singapore has no system for copyright registration. Works that qualify for protection under the Copyright law do not need to be registered, because copyright protection is conferred automatically to the author as soon as it is expressed or fixed in a material form (e.g. paper, tape, CD, etc.) from which it is capable of being reproduced.
61. Can I request Customs to monitor and notify me of suspected infringing goods that are being imported into Singapore?
Unfortunately, since there are no official recording systems through which you can request Customs to notify you of suspected infringing goods, you should not rely on Customs to monitor such shipments on your behalf. Instead you will need to be proactive about monitoring this yourself. However, if you already have details about a suspected illegal shipment in advance, you can activate border enforcement by providing written notice to Customs of a suspected import of IPR-infringing goods. This will apply only to registered trade marks and copyrights and you can only activate border enforcement for IP that is registered in Singapore (both domestic or international registrations). A written notice in the official form must be filed with Customs to inform them of the suspected import of IPR-infringing goods. The IPR owner, its licensee, or their agents can give a written notice to Customs of a suspected import of IPR-infringing goods. The notice must be accompanied by:
• a statutory declaration that the particulars in the notice are true;
• a fee of around EUR 123 (equivalent to 200 Singaporean dollars/SGD);
• where the notice is given by your agent, evidence of the authority of the person giving the notice;
• in the case of suspected trade-mark infringing goods, a copy of the certificate of registration in relation to your Singapore registered trade mark.
62. How does Thailand’s IP legal framework compare to international standards?
Thailand is party to the majority of IP treaties and conventions; it signed the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty (PCT) so as to be in line with the international standards provided in the Trade Related Aspects of International Property Rights (TRIPs) agreement as per the World Trade Organisation (WTO) requirements (see the WIPO website for more details on each treaty - http://www.wipo.int/treaties/en/). Thailand is also contracting party to the Berne Convention for the protection of Literary and Artistic Works. In recent years, Thailand has also undertaken a vast programme of reforms regarding major IP laws, in particular the Copyright Act, the Trade Secrets Act and the Trade mark Act. Enforcement still presents challenges and counterfeits and piracy is still fairly common in the country. Criminal prosecutions are usually considered as the most cost- effective form of enforcement for IP right holders in Thailand.
63. Do I need to register my intellectual property rights in Thailand?
Timely application by EU SMEs for grant and registration of their IP rights before the Department of Intellectual Property (DIP) is still crucial in order for EU SMEs to have a chance of defending and enforcing them. Patents, designs and trade marks are territorial in nature, which means that registration in one country’s jurisdiction does not mean it is automatically enforceable in others. Registrations in multiple countries may therefore be necessary.
Thailand operates under a ‘first-to-file’ system, meaning that the first person to file an IP right in the Thai jurisdiction will own that right once the application is granted.
64. Are bad-faith registrations in Thailand a common issue?
Bad-faith registrations can prevent a rights owner from using their trade mark in Thailand and can cause significant losses to businesses. In Thailand, there are some additional forms of protection against bad-faith registrations, for ‘well-known trade marks’, provided that the mark is actually ‘well-known’ in Thailand.
A key way to cancel a bad-faith registration is by ensuring that the mark was unused for a period of 3 years prior to the petition for cancellation, in which case you can file a petition of cancellation on the grounds of ‘non-use’.
65. Are Geographical Indications (GIs) protected in Thailand?
GIs are recognised and have been registered in Thailand since 2004. Thailand is one of the pioneers of GIs protection in Asia with several GIs already registered nationally and abroad. ‘Champagne’ from France, ‘Prosciutto di Parma’ from Italy, ‘Scotch Whisky’ from Scotland and ‘Cognac’ from France are all examples of European GIs which are recognised in Thailand. In 2013 ‘Khao Hom Mali Thung Kula Ronghai’ or “jasmine rice” from Thailand became the first Southeast Asian GI to be recognised in the European Union.
For a GI from a European country to enjoy protection in Thailand, there must be clear evidence that such a GI is protected under the law of its home country and has been used continuously until the date of filing an application.
Unlike in the EU, GIs might become generic in Thailand. GIs on wines and spirits and rice get stronger protection than those on agro-food products. In addition, GIs on handy crafts are protectable in Thailand.
66. How to protect inventions in Thailand?
The Thai IP system divides patents into two categories: patents of invention and utility models (also called ‘petty patents’). Both are exclusive rights temporarily granted for an invention. Obtaining a patent is the only way to efficiently secure a product or a method against counterfeiters. Both current types of patents in Thailand (invention and petty patents) need to be ‘new’ (this means it has not been published anywhere or disclosed to the public prior to the date of filing).
Patents of invention, as well as being new, must be ‘inventive’ (this means a new technical solution or improvement to a product or process) and ‘industrially applicable’, as is the case in most international patent systems.
Contrary to patents of invention, petty patents are not required to be ‘inventive’, and thus the registration process is different. There are also differences in the length of protection.
Patents of invention last 20 years from the filing date and there are no possibilities for extension/renewal. The registration process currently suffers severe backlogs and takes up to 5 - 6 years or more. Petty patents last 6 years from the filing date and can be extended twice for 2 more years (i.e. maximum term of 10 years). The registration process typically takes between 3 to 5 years.
67. Protection of Design in Thailand, what do I need to know?
A design right is an exclusive right temporarily granted for a form or composition of lines or colours, which gives a special appearance to a product and can serve as a pattern for a product of industry or handicraft. Design rights, which in Thailand are called Design Patents, cover products with a distinctive and ‘novel’ shape, pattern, colour or combination of them all. This means essentially that it will not be widely known or used by others in Thailand or a foreign country before the filing of the application. Furthermore it will also not have been mentioned in a document or a printed publication in Thailand or a foreign country before the filing. According to Thai Patent law, a registered design should not resemble any prior design.
Thailand is a member of the Paris Convention, which means that applicants' Design Patents are entitled to a ‘right of priority’ (i.e. you can use the same filing date as the original application made in your home country), if the same filing has been made within the last 6 months. The first-to-file system applies for Design Patent protection in Thailand.
68. What are the main routes of IPR enforcement in Thailand?
There are three main avenues of enforcement you can consider: administrative actions, civil litigation and criminal prosecution. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option, particularly for SMEs with budget constraints.
Administrative measures in Thailand are generally not seen as effective due to a lack of sufficient resources (both financial and human) and proper training of the enforcement agencies, as well as non-deterrent punishments imposed on infringers.
Civil litigation is rarely used in Thailand due the difficulty in proving ‘actual damages’, the lack of a formal discovery process, and the delays in prosecuting the case. There is also a lack of proper IP training and human resources within the judicial system, meaning that outcomes can be somewhat unpredictable.
Criminal prosecutions are usually considered as the most cost-effective enforcement route available to IP right holders in Thailand. The judges are reluctant to impose harsh penalties on infringers, especially for first-time and minor offenders. The outcomes of lighter penalties often do not act as a significant enough deterrent to infringers.
69. How does Vietnam’s IP legal framework compare to international standards?
Generally speaking, Vietnam’s IP legislation is now relatively comprehensive, covering most aspects of IP protection in accordance with international standards required by the TRIPS and relevant implementing regulations. Vietnam is also a member of the major international conventions and treaties regulating IP matters. Nevertheless IP Enforcement in Vietnam is still challenging for foreign companies. The Vietnamese authorities are still working towards improving training for court officials, judges, customs authorities, and other IP enforcement agencies, and there is still some variation of court decisions based on the location of the court chosen for the legal action. In many cases judges in rural areas lack the right experience and legal training to bring fair judgements in line with Vietnamese law, which means that choosing the right court for your legal proceedings could be very important.
70. Can I apply for trade mark protection for a fancy package for a product I am going to commercialise in Vietnam?
Yes. In Vietnam three-dimensional signs (shapes) can be registered as trade marks, provided that they comply with a number of indicators set by the Vietnamese law. A mark must therefore be distinctive, i.e. consist of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination. It cannot also be identical with or confusingly similar to national flags, names of political organisations, real names and should not cause misunderstanding or confusion as to the origin, properties, quality, or other characteristics of the goods or services. It cannot be identical or confusingly similar to another person’s mark already registered or used for identical goods or services. Trade mark protection lasts for 10 years from the filing date in Vietnam, with the option to extend for a consecutive 10 year period for an unlimited number of times. The registration process typically takes up to 15 months.
71. How do I register a patent in Vietnam?
As Vietnam is a member of the Patent Cooperation Treaty (PCT), registration can be made directly in Vietnam, or internationally via the PCT procedure. Application requirements and approval time may be reduced when applying for an Invention Patent or Utility Solution Patent via the PCT system and the application process can be further accelerated by paying an additional fee.
To obtain a patent, an application must be filed with the National Office of Intellectual Property of Vietnam (NOIP). The application dossier must contain the following:
• A request made in the standard form provided by the NOIP.
• Documents, samples, and information identifying the invention/utility solution.
• Receipt of fees and charges.
• Power of Attorney, if a representative is making the filing on your behalf.
• Documents demonstrating that you own the right to registration, if the invention has been acquired from another person.
• Documents demonstrating the priority right (if you are claiming this).
72. Do I have to register my copyright in Vietnam?
Copyrights that are already granted in countries that are part of the Berne Convention, of which Vietnam is a member, are already granted in all other treaty countries. The convention also means that you as the creator automatically own the copyrights without the formal need to register them. However, it is still advisable to register copyrights in Vietnam with the National Copyright Office of Vietnam (NCO), or the Department of Culture, because this will make court proceedings easier if you ever need to enforce these rights before a Vietnamese court. Copyright certificates are also required in certain enforcement procedures. The NCO is required by law to notify you in writing whether or not the copyright has been granted within 15 working days from the date of receipt of a valid application.
73. What is a trade secret according to Vietnamese law?
Trade secrets are defined by Vietnamese law as ‘information obtained from financial or intellectual investment activities, which have not been disclosed and are applicable in business’. A piece of information falls under the definition of a trade secret when the information:
• Has not been made public, and is not common knowledge;
• Gives its owner a business advantage;
• Remains secret because the owner takes necessary measures to protect the confidentiality of the information.
Typically trade secrets could include new products or business models, special techniques, customer and supplier lists, technical know-how, etc.
Please bear in mind that, as trade secrets are a relatively new additions to Vietnamese IP law, the Vietnamese authorities have not dealt with any infringement cases relating to trade secrets to date. Trade secrets are protected upon creation without any registration, provided that reasonable measures have been taken to keep the information secret.
74. How should I collaborate with the Vietnamese Customs and add company information to the Vietnamese Custom’s database?
Although registering with Vietnamese Customs is not mandatory, it is advisable to add yourself to their database as it will help the Customs authorities to recognise counterfeit versions of your product, and improve the chances of such suspect items being blocked at the border.
If you know of a suspected illegal shipment of your products you can also work together with Vietnamese Customs to detain such shipments. In order to monitor the flow of infringing goods crossing Vietnam’s borders, you will need to initiate customs recording by filing a request with the General Department of Customs. Vietnamese IP right holders may file the request with the General Department of Customs directly. Foreign IP right holders must file the request via an IP Agent. The application must be in Vietnamese, however, the standard forms provided by the General Department of Customs are issued in both English and Vietnamese.
A request for recording must contain the following mandatory documents:
• Certified copies of your IP Certificates of Registration
e.g. trade mark registration certificate;
• Documents relevant to the goods you wish to register with customs, including: list of authorised importers/ exporters, mode of importation/exportation of genuine goods, description of how to distinguish the genuine goods from infringing ones, documents on the origin of genuine goods, and pictures of genuine goods;
• A notarised and legalised Power of Attorney (if you are filing through a local IP Agent)
• In addition, the applicant should submit the following supporting documents (if available):
• Information on estimated time and venue of import and export;
• Expert opinions on infringing goods;
• Sanctioning decisions made by enforcement agencies in previous cases of infringement of the goods you are registering (if applicable).
The Customs Office should notify you no later than 20 days after the receipt of request you regardless of whether your application has been accepted or rejected. There is no official cost for filing a request for registration with Vietnamese Customs.
75. I’m attending a trade fair and/or matchmaking event, what do I need to do to protect my IP?
• Identify your key IP assets (trade marks, patents, copyright) and register your rights in the South-East countries of your interest in advance. Depending on the type of IP, the registration process can vary from several months (e.g. copyright, trade marks) to several years (e.g. invention patent), so advanced planning before market entry is needed.
• Make sure that the brochures and other marketing materials that you use at the trade fair have copyright notices on them.
• If you are planning to have business meetings with potential partners, check their IP background and propose them to sign a Non-Disclosure Agreements(NDA) before entering into technical discussions.
• Assess your trade secrets before the trade fair so that you can be conscious about not disclosing them at meetings or discussions.
• Prepare well for the trade fair or matchmaking events by researching the exhibitors, potential business partners and the exhibitors’ contracts.
• Trade fairs are also a good opportunity for monitoring the market for any infringement of your products.
76. I have found counterfeits of my products in several countries in South-East Asia. How should I proceed?
There are usually two (2) main avenues of enforcement which are common for the majority of countries: civil litigation and criminal prosecution.
Enforcement through Courts, criminal proceeding (or police) or administrative bodies are possible only in few countries of South-East Asia. It is important to know what the most effective way may be according to the country of interest. Please bear in mind that some countries do not provide administrative actions at all (e.g. Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, and Singapore) and only allow civil litigation or criminal prosecution or customs seizure.
In countries where administrative procedures are possible (e.g. Philippines, Thailand and Vietnam), the main differences are:
• In general, the administrative channel is considered relatively fast and cost effective, but only issues confiscation and destruction orders, and fines.
• The judicial channel can lead to compensation in damages and/or even to criminal punishment, but is time consuming and more expensive.
The question of the most appropriate enforcement method depends on the specific case and claims as well as the country of reference. Administrative measures might still be seen as deficient and not effective due to a lack of sufficient resources (both financial and human). Furthermore proper training of the enforcement agencies, as well as punishments that act as a deterrent for infringers may not be available.
The efficiency of police raids may also be compromised by leaks from police sources and corruption in some countries such as Indonesia, the Philippines, Thailand and Vietnam.
It is always recommended that you consult a specialised lawyer to gain advice on the appropriate enforcement actions to take in a specific country. Collecting valid evidences is crucial to win a case everywhere.
Some countries in South-East Asia consider IP infringement as a criminal offence and it would be worth considering this avenue. For instance, in Thailand, criminal prosecutions are usually considered as the most cost- effective enforcement route available to IP right holders. However, search warrants, necessary to conduct a raid, are also very difficult to qualify for, as the standard of evidence required is very high.
77. How important is it to sign an NDA with potential business partners and what IP clauses should be included?
It is advisable that you sign an NDA with any third party with whom you plan to reveal confidential information to, such as sensitive product information, designs and technical drawings, business strategy, client information, etc. A basic template will require little modification for use with different products and clients in the countries of your interest. NDAs might be a new concept for many South- East Asian jurisdictions, however, contractual protection is always recommended and a third party that is unwilling to sign an NDA is unlikely to be a trustworthy business partner and should be treated with caution.
Sometimes a basic NDA on its own might not be sufficient to protect your IP, especially when not every single product will be registered IPR. Under these circumstances, a ‘non-disclosure/non-use/non-circumvention agreement’ (an ‘NNN’ Agreement) may be used: 1. The non-disclosure provisions will cover the unauthorised disclosure of confidential information. 2. The non-use provisions will state that the manufacturer cannot produce your product or any similar products for anyone other than you. These provisions will prevent the manufacturer from making or selling similar ‘copycat’ products without your authorisation. 3. The non-circumvention provisions will prevent the manufacturer from by-passing the protection or circumvention means or technologies that you put into your product.
In order to have an enforceable NDA or NNN Agreement, it is important to select an appropriate governing law and dispute resolution clause therein.
78. How can I protect my domain name?
Internet usage in the Association of South East Asian Nations (ASEAN) has increased significantly over the past 10 years. When doing business in South-East Asia, it is essential to protect company names, and trade marks through domain name registrations under top level domain in each of the ten (10) countries of your interest.
Most registry authorities from the respective ASEAN countries provide lists of accredited registrars or act themselves as official registrars for domain names. The prices vary from EUR 50 to EUR 100, for a one (1) year registration period.
To know more on domain name protection in South-East Asia and for the lists of accredited registrars, see the Guide on Protection of Online IPR in South-East Asia.
Table 1: Trade Marks – South-East Asia Comparison
79. Table 1: Trade Marks – South-East Asia Comparison
|Country||Approximate time required to complete the registration||Duration of Protection|
|Brunei||15-18 months||10 years renewable|
|Cambodia||6 months||10 years renewable|
|Indonesia||24 months||10 years renewable|
|Laos||6-9 months||10 years renewable|
|Malaysia||1-2 years||10 years renewable|
|Philippines||6-18 months||10 years renewable|
|Singapore||7-9 months||10 years renewable|
|Thailand||12-18 months||10 years renewable|
|Vietnam||12-15 months||10 years renewable|
Table 2: Patents – South-East Asia Comparison
80. Table 2: Patents – South-East Asia Comparison
|Country||Duration of the Protection of inoovation Patents||Duration of the Protection of Simple Patents/Petty Patents/ Utility Models||Duration of the Protection of Industrial Designs|
|Brunei||20 years extendable by 20 more years with conditions||/||5 years renewable max. two times|
|Cambodia||20 years||7 years||5 years renewable max. two times|
|Indonesia||20 years||10 years||10 years|
|Laos||20 years||10 years||15 years|
|Malaysia||20 years||10 years extendable twice by 5 years||5 years renewable for four times|
|Philippines||20 years||7 years||5 years renewable max. two times|
|Singapore||20 years||10 years/15 years||15 years|
|Thailand||20 years||6 years extendable twice by 2 years||10 years|
|Vietnam||20 years||10 years||5 years renewable max. two times|
Table 3: Copyright – South-East Asia Comparison
81. Table 3: Copyright – South-East Asia Comparison
|Country||Duration of the Protection of Literary, dramatic, musical and artistic works from the end of the year in which the author died||Voluntarily registration available|