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How to Protect your IP in Creative Industries in China and South-East Asia

China & South-East Asia IPR SME Helpdesk

Giovanni F. Casucci

China and South-East Asia IPR SME Helpdesk External Expert

Date: 21 September 2016

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Helika JurgensonProject Executive

South-East Asia IPR SME Helpdesk

21 September 2016 Copyright © 2016 South-East Asia & China IPR SME Helpdesk. All rights reserved.

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Name: Mr. Giovanni F. Casucci

Firm: Bardehle Pagenberg

Location: Milan, Italy

Email: [email protected]

Giovanni F. Casucci is the founder of the Italian branch of the Bardehele Pagenberg. IP litigator inItaly since 1992. From 1999 to 2005 director of a Master program in IP Management at thePolitecnico of Milano University. Since 2008, director of the Master program of ICE (Italian TradeCommission) on IP and China (“Ideacina”) and member of the faculty of the MBA programs of MIPPolitecnico of Milano.

Current Coordinator of the Commissions “Design” and “Trade Fairs” at CNAC (Italian NationalAuthority for Anti Counterfeiting)

He was active in the training seminars in China within the IPR2 program. In particular, in September2006 (within the EU-China Trade Project) lecturer at the National Judge College of Beijing (oneweek seminar), 2010 Chinese road show seminar about EXPO IP enforcement, and Mock trial at theEXPO 2010 in Shanghai.

Main contributor to the IPR2 Study on “Protecting IPR at EU Trade fairs and Exhibitions”, 2008.

Author of several publications on IP Rights and active in several training courses on IP.

Speaker’s Bios


mailto:[email protected]

Agenda

21 September 2016Copyright © 2016 South-East Asia & China IPR SME Helpdesk. All rights reserved.

Legal Framework

Patents

Design

Trade marks

Enforcement

Trade Fairs

Take-away Messages

China: Shanzhai = Slavish Imitation?


Painters compete in a facsimile match in Dafen Village, Shenzhen City, in south China's Guangdong province. Photo: AP Photo/Xinhua, Feng Ming

Means “a remote mountain village”, implying “a group of people living in the mountain and taking it as theirs without governmental rules, who are really independent and fight for themselves”,

Appearance


(Pat) ® ™® © (UC)

Intellectual Property


Patents


Poll I

Have you ever verified the Chinese patent database before exporting your technology to China?

A. Yes

B. No

C. No, I don’t know where verify it


Patents


TRIPS: Design


• SECTION 4: INDUSTRIAL DESIGNS

• Article 25

• Requirements for Protection

• 1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.

• 2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.

Design


Poll II

Do you consider China an interesting market for design products?

A. Yes

B. No

C. I don’t know

D. No, I don’t have design products


Time Table Comparison


Industrial Design and Applied Art on Commercial Products


Trade Marks


Poll III

Have you ever verified the Chinese trademark database if your trademark is already registered in China ?

A. Yes

B. No

C. No, I don’t know where to verify it


Trade Marks: the Chinese Language Way


• Creating a literal translation of a brand’s name into Chinese:

• Apple Computers - Chinese name ‘Ping Guo’ (苹果) – literally the Chinese word for ‘apple’;

• Creating a phonetic translation:

• Siemens’ ‘Xi Men Zi’ (西门子);

• Combining a literal and a phonetic translation

• Coca-Cola: ‘‘Ke Kou Ke Le’ (可口可乐), which means ‘taste and be happy’).

Case Study I: Tenax Case


Case Study II: Tenax Case


Enforcement I


Enforcement II


Poll IV

Have you had any case of IP infringement in China or in South-East Asia?

A. Yes, in China

B. Yes, only in South-East Asia

C. Yes, in both regions

D. No

E. I don’t know


Administrative Authority


Case Study III: Panda/Peri


Italy / China

Case Study IV: Silk Market


Beijing

Case Study V: Ferrero Case


Case Study VI: New Balance Case


Case Study VII: Moncler Case


Moncler awarded three million yuan (€420,000/ $470,000) in damages as a result of trademark infringements by a company called Beijing Nuoyakate Gourmet.

Moncler had discovered in 2013 that Nuoyakate was manufacturing and selling down jackets with counterfeit Moncler logos and that the Chinese group had attempted to register several fake trademarks and domain names in China and elsewhere.

http://www.thelocal.it/20151117/italys-moncler-wins-china-counterfeit-case

http://asia.nikkei.com/Business/Companies/Italian-clothier-Moncler-

wins-trademark-lawsuit-in-China

http://www.thelocal.it/20151117/italys-moncler-wins-china-counterfeit-case

http://asia.nikkei.com/Business/Companies/Italian-clothier-Moncler-wins-trademark-lawsuit-in-China

• Intellectual Property and the ASEAN Economic Community: 10 different countries

• Territorial nature of IP

• First-To-File system for IP

• Different SEA countries are at different stages of economic, commercial and legal development

• Enforcement challenges across all South-East Asia

• Non homogeneous IP landscape

33

Know your IP and know the IP landscape of the country you are interested in is key to plan a long-term strategy for your business to grow!

*Myanmar is the only ASEAN country not having enacted any IP laws


IP Landscape n South-East Asia

IP Landscape in South-East Asia 2/2

The Association of Southeast Asian Nations -ASEAN

1.Singapore

2.Malaysia, Philippines, Thailand

3.Brunei, Indonesia, Vietnam4.Cambodia, Laos5.Myanmar

• Comprehensive legislation/ international standards and WTO obligations

• Issues in relation to IP registration procedures

• Issues in relation to enforcement

• Lack of IP laws and very weak enforcement


South-East Asia: International IP Treaties

Country Accession to theBerne Convention

Accession to theParis Convention

Accession to theTrade Related Aspectsof IP Rights (TRIPS)

Brunei

Cambodia

Indonesia

Laos

Malaysia

Myanmar

Philippines

Singapore

Thailand

Vietnam


Table 1: Status of Accession of South-East Asia Countries with key International IP Treaties and Agreements

Patent Cooperation Treaty (PCT)

Madrid System

Country Administrative Action Civil Action Criminal Action Customs Seizure

Brunei

Cambodia

Indonesia Option is legally possible, but not commonly used in

practice

Laos

Malaysia

Myanmar

Philippines

Singapore Option is legally possible by way of a special notice

issued by the IP owner to the customs office, but they do

not keep a database of registered marks or goods

Thailand

Vietnam

South-East Asia: Enforcement avenues


Table 2: Summary of Available IPR Enforcement ActionsIn South-East Asia

Trade Fair Issues in China and South-East Asia


Trade Fair Issues in China and South-East Asia


South-East Asia IPR SME Helpdesk Guide:

Protecting your IP at Trade Fairs in

South-East Asia

Take-Away Messages


• China and South-East Asia are rapidly growing in terms of quality of IP filing andprosecution as well enforcement rules and practice, so the first approach will beon acquiring knowledge about the opportunities offered (i.e. Administrativeenforcement) and being really aware about the current limits e.i.

Patents - China: the “relative novelty” requirement applicable still to patents /utility models filed before the October 2009

Trade marks: the lack of protection for unregistered trade marks in the majority ofcountries

Designs: the of grace period for novelty not consistent with the EU Directive andthe really limited term of protection (10 years) and the need to consider copyrightas alternative against identical

• South-East Asia – these countries are rapidly growing as sub-manufacturingregions, so in order to avoid risk or loss of any control of your IP rights it isessential to file and register your rights first. At the moment, only a select few ofthe countries offer good possibilities to obtain acceptable results under theenforcement perspective (Singapore, Malaysia).

Q&A

Name: Giovanni F. Casucci

Firm: Bardehle PagenbergLocation: Milan, Italy Email: [email protected]


mailto:[email protected]

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Library of publications:

IP specific guides, incl. patents, trade marks

Industry specific guides, incl. textiles, machinery, creative industries

Business guides, incl. technology transfer

Country Factsheets, incl. Mainland China, Hong Kong, Macao, Taiwan and the 10 South-East Asian countries


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