1

Waiting for the Organiser…

The webinar will begin shortly

2

Practical, first-line and business focused

intellectual property advice for EU SMEsSouth-East Asia IPR SME Helpdesk

Mr Max Ng

IP Expert

23 February 2016

3

Nora BihariProject Manager

South-East Asia IPR SME Helpdesk

Welcome to the Webinar

Valentina SalmoiraghiIP Business Advisor

South-East Asia IPR SME Helpdesk

23 February 2016

Webinar Interaction Tools

4

Turn on full screen here

Raise your hand here

Send the IP expert a question here

Webinar 24 hour technical support number: http://support.gotomeeting.com ‘Contact Us’ section

23 February 2016

5

Snapshot: Helpdesk Free Services

Enquiry Helpline

IP Guides & NewslettersE-learning &

Business Tools

Training Workshops& Live Webinars

Website & Blog

23 February 2016

Speaker’s bioName: Max NgFirm: Gateway Law Corporation

Location: SingaporeEmail: max.ng@gateway-law.com

Max is the Managing Director of Gateway Law Corporation, a regional legal practicewith particular strengths in the areas of intellectual property advisory andenforcement, franchising, technology and communications, and media andentertainment law. Headquartered in Singapore, Gateway has offices, people andassociated offices in Malaysia, Hong Kong, the Philippines and in other South EastAsian countries.

Max’s practice revolves around patents and trade marks and other IP litigation andenforcement actions. Max also has expertise in licensing, franchising, technology andtelecommunications law. Max has appeared before the Singapore High Court andCourt of Appeal in numerous IP cases, and is also listed as a leading lawyer inpublications such as Legal Who’s Who, AsiaLaw Leading Lawyers, Asia Pacific Legal500, Chambers Asia, Legal Who’s Who Singapore, and The International Who’s Who ofBusiness Lawyers.

623 February 2016

7

• Protecting Your Brand with Trade Marks

• Trade Mark Protection in Singapore

• Trade Mark Protection in Indonesia

• Trade Mark Protection in Thailand

• Trade Mark Protection in Myanmar

23 February 2016

Overview of Trade Mark Protection in Singapore, Indonesia, Thailand & Myanmar

8

• Establishing a strong brand and protecting it is pivotal to business success.

• Trade mark: important first step for businesses to secure their brands.

• What can be a trade mark?

– Words (e.g. Coca-cola), phrases (e.g. JUST DO IT), names (e.g.

FORD), logos (e.g. ), shapes (e.g. ), combination of

letters and designs (e.g. ), colours, configurations of

goods, aspects of packaging, or other distinctive features which

can be represented graphically.

23 February 2016

Protecting Your Brand with Trade Marks

9

• Sound mark and scent mark?

– Currently, no ASEAN country has recognised sounds and scents as trade marks.

– Amendments to the Trade Mark laws of Singapore, Malaysia, Vietnam andBrunei are expected to provide for registration of sound mark and “bestefforts to register scent marks” to comply with the recently concluded Trans-Pacific Partnership Agreement.

23 February 2016

Protecting Your Brand with Trade Marks

10

Have you already registered your trade mark in South-East Asia?

a) Yes, one trade mark

b) Yes, more than one

c) No, but I am considering registration

d) No, because I believe it will be difficult to combat infringements

23 February 2016

Poll Question 1

11

• “First-to-use” or “first to file”?

– Trade mark registration granted to the person who first filed the trade markapplication.

– First use may prevail, in appropriate circumstances.

• Registration of trade mark:

– Registration can be granted before actual use.

– However, right holder must put the mark to genuine use in the course of tradewithin 5 years or risk revocation.

– Registration of trade mark in bad faith risks invalidation of trade mark.

• Claiming priority from the base application:

– Priority can be claimed in accordance with the Paris Convention, based on anearlier application filed in another party state, within 6 months of the earlierapplication.

23 February 2016

Trade Mark Protection in Singapore

12

• Case study: PT Swakarya Indah Busana v Dhan International Exim Pte Ltd

– PT Swakarya (registered proprietor of (for garments) sought

to invalidate Dhan International (DI)’s mark

– Grounds of invalidation: mark was registered in bad faith and/or tainted withfraud, and that DI never intended to use the mark in its registered form whenit was filed under the Trade Mark Act.

23 February 2016

Trade Mark Protection in Singapore

13

Trade Mark Protection in Singapore

– Held: Clear evidence that DI copied PT’s mark:

• The registered mark was not used at all times by DI for its garments.

• The other mark that DI was using had the word “emperor” conspicuouslysmaller than the word “Martin”. Furthermore, it was also obvious that theword ‘emperor’ appeared above the word “Martin” so that there was noquestion of pronouncing the brand as “Emperor Martin”. This was seen asa deliberate act to copy PT’s marks by placing the emphasis on the word“Martin” rather than the word “emperor”.

– Further, bad faith intention on DI’s part:

• DI had not used the registered mark in its registered form; and

• Conscious effort to copy PT’s mark and preference not to use theregistered mark.

23 February 2016

14

• Enforcement of trade mark:

– Civil litigation;

– Criminal prosecution;

– Customs seizure;

– Police raids following right owners’ complaint;

– Alternative dispute resolution: mediation & arbitration.

• Pre-litigation actions are important too:

– Provisions against groundless threats of legal action in the Trade Marks Act.

– As such, upon discovery of apparent infringements, right owners should firstcontact the alleged infringers via Cease & Desist Letters to notify the latter oftheir rights.

– Advantages:

• Prevent a counterclaim of groundless threats of infringementproceedings.

• Prevent alleged infringers from arguing ignorance subsequently.

23 February 2016

Trade Mark Protection in Singapore

15

• “First-to-file” system:

– Compared to Singapore, it is even more important to apply for trade markearly in Indonesia, before market entry of goods or services, given that:

• The appeal and enforcement regimes in Indonesia are still developing;and

• Trade mark piracy and “bad faith” registrations are common.

• Claiming priority from the base application

• Registration of trade mark for future use:

– Registration may be granted before actual use.

– However, such registered mark must be put into use in trade for relevantgoods and services for at least 3 consecutive years. Otherwise, the mark isvulnerable to cancellation.

23 February 2016

Trade Mark Protection in Indonesia

16

• Case study: Cancellation of IKEA trade mark in Indonesia

– IKEA Systems B.V. successfully registered its IKEA trade mark in Classes 21 and20 in Indonesia in October 2006 and October 2010 respectively (“the originalIKEA registrations”), well before it opened its first store in Indonesia in 2014.

– IKEA subsequently filed 2 new applications for the mark in the same 2 classesin March 2012 and was granted registrations in September 2014.

– Meanwhile, local company PT. Ratania Khatulistiwa filed 2 applications inClasses 20 and 21 for the mark IKEA INTAN KHATULISTIWA ESA ABADI inDecember 2013 and shortly after filed a lawsuit with the Central JakartaCommercial Court to cancel the 2 original IKEA registrations based on non-use.

– Commercial Court ruled that IKEA mark should be cancelled due to non-use.Decision affirmed by Supreme Court.

Trade Mark Protection in Indonesia

23 February 2016

17

• Lessons to be learnt:

– Importance of reviewing trade mark portfolios periodically and identifyingwhich registrations (if any) are vulnerable to non-use cancellation.

– Indeed, IKEA was itself aware of this possibility when it filed the 2 newapplications in 2012.

Trade Mark Protection in Indonesia

23 February 2016

18

• Enforcement and border protection regimes have not developed sufficiently toeffectively control IPR infringements.

• Practical enforcement avenues for SMEs are thus:

– Mediation – less costly and time consuming

– Threats of legal action to alleged infringers

• Other avenues for enforcement:

– Civil actions (litigation) – costly and time consuming

– Criminal enforcement system – rarely used in practice due to:

• The lack of transparency in police procedures; and

• The expenses that come with police raids – EUR 8,000 – 19,000.

23 February 2016

Trade Mark Protection in Indonesia

19

• “First-to-file” system:

– Trade mark registration granted to the person who first filed the trade markapplication.

– Advisable to thus apply for trade mark before market entry of goods orservices.

• Claiming priority from base application:

– Priority can be claimed in accordance with the Paris Convention, based on anearlier application filed in another party state, within 6 months of the earlierapplication.

• Registration of trade mark for future use:

– Registration may be granted before actual use.

– However, such registered mark must not be discontinued for any 3consecutive years. Otherwise, the mark is vulnerable to cancellation.

23 February 2016

Trade Mark Protection in Thailand

20

• Benefits of trade mark registration:

– Stronger protection, more enforcement avenues;

– Accelerates the enforcement process;

– Reduces the costs for enforcement; and

– Improves the possibility of stopping infringing action.

23 February 2016

Trade Mark Protection in Thailand

21

• No specific legislation covering the registration and protection of trade marks;hence, no trade mark registration system.

• “Informal” trade mark registration:

– Registration of Declaration of Ownership of Trade Mark with the TownshipOffices of the Settlement and Land Records Department.

– Followed by publication of Cautionary Notice in the daily press.

• However, this practice does not confer:

– Conclusive evidence of ownership of trade mark; and

– Property right for the owner of the trade mark.

23 February 2016

Trade Mark Protection in Myanmar

22

• Draft Trade Mark Law No. 14:

– Reviewed and approved by the Attorney Generals Office;

– Submitted to Parliament for consideration but has not been examined ordiscussed as of the moment.

• Shifting protection from the current practice to the new Trade Mark Law?

– Trade marks which are “registered” before the new Trade Mark Law comesinto force will continue to receive “protection” for 3 years from the effectivedate of the new law.

– For protection thereafter, trade mark owner must file a trade mark applicationunder the new Trade Mark Law.

• Looking ahead:

– Pending implementation of the new law, trade mark owners should still seek“protection” for their marks under the current practice.

23 February 2016

Trade Mark Protection in Myanmar

Name: Max NgFirm: Gateway Law CorporationLocation: SingaporeEmail: max.ng@gateway-law.com

Q&A

2323 February 2016

Helpdesk Country IP Factsheets for the ASEAN countries

Check it out NOW!

To access all our publications \

2423 February 2016

25

Social Media: Stay Connected…Follow us on social media for latest news and developments on IP issues inChina and South-East Asia, as well as project activities e.g. events, webinars,new guides.

Fan page: ‘South-East Asia IPR SME Helpdesk'

@iprASEAN

‘South-East Asia IPR SME Helpdesk’

www.yourIPinsider.eu

Channel: Helpdesk TV

23 February 2016

The South-East Asia IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to IPR in South-East-Asia.

To learn about any aspect of intellectual property rights in Vietnam or elsewhere in South East Asia, including

Local partners

Due diligence

IP audits

Or to simply learn about the local landscape and adapt your IP plan accordingly – something which can save you EUR in the long term

Contact us on question@southeastasia-iprhelpdesk.eu

“know before you go, we’re here to help you grow…”

2623 February 2016