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IPR in SouthEast Asia for SMEs

deel 2
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IPEG IP Expert Group

on 5 March 2015

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Transcript of IPR in SouthEast Asia for SMEs

IPR in South East Asia & China

Intellectual Property Rights
in Asia - a General Introduction
Severin de Wit, ASEAN IPR SME HELPDESK
Thank you for your attention
let's now move on to China
Idea 1
Idea 2
What We Cover Today
Challenges, Changes in IPR and Where to Focus
Indonesia
The largest of South East Asian countries with a highly challenging IPR environment
Describe the idea you think is best
Conclusion
which IPRs will you dealing with?
Trademarks
Designs
Patents
Know How/Trade Secret
Copyright
Challenges in IPRs in SE Asia
Low respect for IPRs
Basic understanding
Unfamiliarity with IP potential
Access issues


Recommendations
Register variations as TM not just your name & logo
Marketing and IP policy
Lobbying government relations
Keep close look into competition
Challenges and opportunities
Risks:
corruption,
legal uncertainty,
poor infrastructure,
low tech.,
except China, case apart

Changes in IPR regimes between Asian countries
in common:
slow and ineffective court systems
All Asian countries have implemented TRIPS conform IPRs
low regard for IPR both as protective tool as well as potential

Thailand, Philippines, Malaysia, Indonesia, Singapore, all members of Association of Southeast Asian Nations (ASEAN) as well as China
Economy
Economic boom – 6%+ GDP growth, low Global Financial Crisis impact, robust consumption and investment growth; G20 economy, 240 million (young) population
Risks: corruption, regional devolution, legal uncertainty, low R&D levels, poor infrastructure, growing terrorism threat
Fast growing, largest market in SE Asia; IP holders cannot ignore it; but has the weakest IP system in SE Asia

IPR climate
Not fully WTO TRIPS compliant yet
4 IP laws under amendment in 2013-4
Serious gaps – e.g. v. weak passing off laws, no effective Customs IP border protection
Insufficient detail – e.g. no confusion required for TM infringement!
Non-implementation of key rules - e.g. well known mark dilution,
post grant patent amendment

IPR Registration
Manual systems - many registration errors
Copyright register – abused through pirate registrations of famous logos
Chronic pirate TM registration problem – civil court litigation to recover bad faith marks
Weak TM examination e.g. many descriptive terms are registered
backlog of 75,000+ TMs
Non traditional trademarks not permitted (yet)
Patent examination - conform to foreign grant
No design examination

Pro
Con
Pro
Con
Pro
Con
Refer back to the pros and cons
Explain how it will help
Describe the next steps
Focus on South East Asia & China
Thailand (2)
Although the Royal Thai government has designated 2013 the country’s “Year of IP Protection,” and the Deputy Minister of Commerce has indicated he will head the establishment of a new “Operations Centre for the Suppression of Intellectual Property (IP) Infringement”, Thailand remains not very well placed if it comes to IPR enforcement.

Check existing IPRs
improved the efficiency of the administration of IP,
electronic searches of Trademarks and patents
Strategies for SMEs
Register early in your own name (never in a local agent/distributor’s name)
Investigations are crucial
Oppose / cancel / delete
Acquire – overtly or covertly
Lobbying and PR support

Awareness
what can YOU do to create IPR awereness?
publicity and marketing may help
Vietnam
IPR Laws
General compliance with WTO TRIPS and other international treaties
Negotiating member of the Trans-Pacific Partnership Agreement
Few serious gaps in the law but some inconsistencies – e.g. criteria and evaluation for assessment of well-known TM
Lack of unity within the authorities regarding the understanding of some points
IPR Registration
Strict TM examination process (few descriptive TMs or errors)
Non-visual attributes (sound and smell) and single-colour TMs still excluded
TM oppositions: no clear deadlines to oppose
Well-known TM recognition: subjective, depends on examiner’s experience and point of view
Patents: overloaded examiners, short time to answer office actions
NO IP uncomfortable with patents: granted if first application accepted in another country by prestigious patent offices (USPTO, JPTO, etc)

IPR Enforcement
Few criminal enforcement raids, few criminal prosecutions
Few civil litigations (judges not trained, long, costly, uncertain civil process)
Mostly administrative enforcement, with drawbacks – no strong deterrent effect, vital to work closely with authorities
Authorities sometimes reluctant to deal with complex infringements (such as copyright, patent, Unfair competition, GIs)
Settlement of infringements against trade names and domain names still not clear and remedy is inadequate

Indonesia' challenges
The largest of South East Asian countries with a highly challenging IPR environment
Enforcement
Weak legal system – many conflicting rules
Few criminal enforcement raids, police corruption
very few IP raids go to prosecution
No useable customs border protection system


Enforcement (2)
Civil litigation system improving, (specialist Commercial Court) but preliminary injunctions still untested,
Anton Pillar orders may not work, many evidence complexities
Judicial corruption is a problem in some civil cases (est. around 20%)
Actions to take
Register early and do not leave IP portfolio registration gaps; don’t allow local partners to register IP; deal with TM pirates promptly
Use good bahasa patent translators as the bahasa patent specification is determinative
Use alternatives enforcement strategies while Criminal and Customs are unusable – e.g. warning letters, negotiation and civil actions
Take care with evidence in civil cases, use litigators not IP agents to sue in court
Avoid corruption risks

Philippines
IPR Laws
Civil law system
IP Code from 1998 (amending the 1947 Trademark and Patent laws) covers main IPRs
Passing off/unfair competition possible
Generics Act, Universally Accessible Cheaper and Quality Medicines Act – specific to pharma
Technology Transfer Act
Plant Variety Protection Act
Optical Media Act (DVDs etc)
Member of Madrid Protocol from 2012

IP Registration
Trademarks
Simple TM system – registration within 12 months
Beware of Declaration of Actual Use (similar to U.S) – an ongoing sometimes challenging requirement
Opposition proceedings at the BLA have onerous evidence requirements and are akin to litigation
Copyright
no need to register but Copyright Registration useful in litigation
The Bureau of Copyright for policy formulation, rule making, adjudication, research and education is proposed in the pending Copyright Bill.

Enforcement
Difficult in practice to work with the police and NBI – significant corruption risks
Customs recordal possible; in reality customs make no border seizures; significant corruption risks
Delays in judicial process make courts very slow
IPO administrative litigation a better alternative
OMB active against fake optical media products
Significant risks in litigation of procedural arguments by defense counsel dragging out proceedings
Criminal prosecutions face long delays (up to 10 years to trial)

Thailand
EU Goods exports to Thailand 11.9 billion euro (2011), EU goods import from Thailand 17.5 billios euro, total trade 2011 29.4 billion euro
To Do's
Crucial:
Apply timely for grant and registration
of your IP rights before the Thai
Department of Intellectual Property (DIP)
in order for EU SMEs to have a chance of defending and enforcing them.
IPRs are territorial in nature, so registrations in one country’s jurisdiction are not automatically enforceable in others,
therefore registrations in multiple countries may be necessary
Centralised IP Court
In 1997, Thailand established the Central Intellectual Property and
International Trade Court (CIPITC) which has exclusive jurisdiction
to adjudicate civil and criminal cases involving IP.
N.I.C.E
March 2013: launch of the National IPR Centre of Enforcement (NICE) was a welcome development aimed at ensuring well-coordinated efforts in the prevention of IPR violations in Thailand.
Vietnam - Market summary

Fast growing: +5.1% GDP, growth prospects, robust consumption and investment growth
90 million (young) population
Risks – Corruption, legal uncertainty, low R&D levels, poor infrastructure
Comprehensive IP system but difficulties with implementation, population lack of awareness of IP matters

Seek IP protection before entering the market
Closely monitor markets and IP Gazettes for infringements
Act promptly and firmly against infringers
Use administrative enforcement (warning letters, negotiation, administrative authorities etc)
Train and engage closely with authorities
Avoid corruption risks
Actively manage evidence of infringement, and information/data/materials of business for proving well-known trademark or actions against unfair competition

Actions to take
Market
Economy – 6.6% growth in 2012
The increase was fuelled by the robust performance of the Services sector led by Trade and Real Estate, Renting & Business Activities as well as the substantial improvements of Manufacturing and Construction

Risks – corruption; poverty rates worsened while improving dramatically in some cities

Actions to take
Due to uncertainty of litigation and corruption concerns,
negotiate and settle
Do not get dragged into long technical arguments in litigation which delays cases
Review portfolios to ensure that all TMs are protected as trademark piracy is common
Be careful in filing TM DAU's; online website sales to the Philippines can support them
Fastest way to obtain a patent is via PCT national phase route, with submission of corresponding foreign patent as soon as available

For country-by-country fact sheets in Asia by ASEAN SME IPR Helpdesk, visit

http://www.asean-iprhelpdesk.eu/?q=en/country-factsheets
1 October 2013

Website & Blog

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Available for EU SMEs and SME intermediaries

question@china-iprhelpdesk.eu
+86 (10) 64620892
question@asean-iprhelpdesk.eu

Information & Materials
Library of publications:
IP specific guides, incl. patents & trade marks
Industry specific guides, incl. textiles, machinery, creative industries
Business guides, incl. technology transfer
ASEAN IP Country Factsheets
Quarterly Helpdesk newsletters
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www.China-iprhelpdesk.eu


www. ASEAN-iprhelpdesk.eu


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1 October 2013

Online Portals
Full transcript