IPR Landscape in China and South-East Asia...Industrial Design (10 years protection) • Costs: 3500 –11500 euro ... Vietnam. 4.Cambodia, Laos 5.Myanmar ... • Register your trademark

IPR Landscape in China and South-East Asia

Jurjen Groot

IP Expert

12 June 2018, Brussels, Belgium

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China & South-East Asia IPR SME Helpdesks

Today’s SpeakerName: Jurjen GrootFirm: Groot in Law & Groot in ArtLocation: Utrecht, The Netherlands

Email: [email protected]

Jurjen Groot has been a lawyer for 15 years, advising European clients on corporate, commercialand intellectual property matters related to their business in China.

He worked for worldwide lawfirm CMS, including 3 years in Shanghai, and thereafter headed itsChina Practice in The Netherlands.

Jurjen currently works as an independent lawyer and has an art dealership.

Jurjen’s IP related work includes advising a Dutch market leader in optical fiber on licensing and IPprotection matters and assisting a world known Dutch innovative storm umbrella company on itsIP protection and anti-counterfeiting strategy in China. Jurjen regularly publishes articles and wasinvited as a speaker and panellist on several occasions, including on a Dutch national TVdiscussion show, commenting on legal matters in China, including IP protection.

12 June 2018, Brussels Copyright © 2016 South-East Asia & China IPR SME Helpdesk. All rights reserved.

mailto:[email protected]

Agenda

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• Overview China and ASEAN IPR SME Helpdesks

• IPR Protection in China: Framework

• Types of IPR in China

• Enforcement of IPR in China

• Case studies & Lessons Learned

• IPR Protection in South-East Asia: overview

• Take-away messages


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• Fast changing landscape, substantial improvements

• Extensive laws and regulations developed

• First to file/register system

• Separate national IP systems: protected in home market(s) does not

(automatically) mean protected in China!

• Infringement is almost inevitable, but enforcement is possible: choose your

product specific IPR strategy & pick your battles!

IPR Protection in China: Framework

12 June 2018, BrusselsCopyright © 2016 South-East Asia & China IPR SME Helpdesk. All rights reserved.

Types of IPR in China

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• Patents: PRC Patent Law and Implementation Rules

• Trade marks: PRC Trademark Law and Implementation Rules

• Copyright: PRC Copyright Law

• Domain names: Measures Administration Internet Domain Names


Patents

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• Different patents in China:

– Invention Patents (20 years protection, application 3 – 5 years)

– Utility Models (10 years protection, application appr. 8 months)

– Industrial Design (10 years protection)

• Costs: 3500 – 11500 euro

• Chinese translation needed


Trademarks

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• “First come first serve”, be sure to be first! Others can register your trade

mark in China, can cause big trouble

• Advisable to also register Chinese translation of trade mark

• Registration period: 12 months (recently shortened)

• Protection period: 10 years, can be renewed

• Costs: appr. 250 – 500 euros


Trademarks – PRC Trademark Law

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• Multiclass applications possible

• Compensation amounts and administrative fines

• Stricter on bad faith registration: registration rejected if applicant has a

contractual or business relation with the (in China non-registered) right

holder and knows of the prior right’s existence. However: strict enough?


Copyrights

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• Originate automatically by creation of the work

• However: can be registered in China with Copyright Protection Center of

China

• After registration: Copyright Registration Certificate, can be very helpful

to prove that the copyright is yours. e.g. for technical drawings


Enforcement of IPR in China

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• Cease and desist letter

• Administrative proceedings

• Civil court proceedings

• Criminal proceedings

• Customs protection


Cease and Desist Letter

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• Quick and can be quite effective

• Strong signal that you are serious about protection your IPR

• If important infringers: be sure to first finish investigation/gather evidence

• Letters can also be sent to online shops (e.g. Taobao, Alibaba), must remove

infringements

24 April 2018, Maastricht Copyright © 2016 South-East Asia & China IPR SME Helpdesk. All rights reserved.

Administrative Proceedings

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• Trademark: AIC (powerful)

• Patent: SIPO (less powerful)

• Can be very quick and effective

• Raids and injunctions

• No financial compensation possible


Civil Court Proceedings

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• Specialized IP divisions in most Intermediate and High Courts

• Specialized IP courts in Beijing, Shanghai, Guangzhou, more to come

• Can award damages, recently amounts were increased

• However: in reality only % of total damages claimed

• Arbitration: contractual option

• Complicated invention patent infringements


Criminal Proceedings

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• Local Public Security Bureau (PSB)

• Effectiveness varies

• Beware: no longer control of the case


Customs Protection

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• IPR can be registered with customs

• On the basis of random checks

• Most effective for trade marks

• Can be combined with Customs Protection in EU

• Free Customs service

• Full application can be done online (recently)

• Be sure to “educate” Customs about products and infringers



Foreign company A has a good reputation in western fashion industry. Hasown brand for shoes and clothes. Products manufactured in China, sold inEurope. A only registered TM for shoes in China.

Competitor B has registered TM for clothes in China similar to A’s TM forshoes. B has also recorded that TM with China Customs. When company Ashipped its clothes from China, Chinese customs detained the goods, andconfiscated because of TM infringement.

Case Study: Trademarks & Customs


Case Study : Lessons Learned• Trade mark registration must fully cover all goods of your company.

• Your trade mark is only protected in China if registered in China.

• Customs registration can be effective way of trade mark protection, also

against you if you didn’t register your trade mark(!!)

IP Landscape in South-East Asia• 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 is challenging across all South-East Asia

• Non homogeneous IP landscape

Know your IP and know the IP landscape of the country you are interested 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 in South-East Asia (2)

The Association of Southeast Asian Nations - ASEAN

1.Singapore

2.Malaysia,

Philippines,

Thailand

3.Brunei,

Indonesia,

Vietnam

4.Cambodia,

Laos

5.Myanmar

• Comprehensive

legislation according

to international

standards and WTO

obligations

• Issues in relation to

IP registration

procedures

AND

• Challenges in

relation to

enforcement

• Lack of IP laws and

very weak

enforcement12 June 2018, Brussels

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

Members of the International Patent and Trade Mark Registration System

COUNTRYIs.... part of PCT, the International

Patent Registration System?

Is.... part of Madrid System, the International Trade mark

Registration System?

Brunei Darassalam

Cambodia

Indonesia X

Lao People’s Democratic Republic

Malaysia X

Myanmar X X

Philippines

Singapore

Thailand X

Vietnam


Enforcement: Overview of Legal IPR Enforcement Options in South-East Asia

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 ✓ ✓ ✓ ✓


Take-away messages (I)

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• Be sure to file first (before your Asian partner/competitor!)

• Register your trademark in China & relevant SEA countries

• Protecting your IP should be part of your business model

• Careful with samples and exhibitions

• Your website is also accessible in Asia…

• Long-term IP strategy is required as “quick fix” ex post would only bring

scarce results and can end in large economic loss or exit from the market;

• Add layered IP protection to ideas, products, marks, packaging;

• Sign written contracts and insert IP clauses in contracts: contractual

protection is stronger than registration only12 June 2018, Maastricht

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

Take-away messages (II)

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• Make a due diligence on partners;

• Be on alert and proactive in monitoring online infringements;

• Plan a budget for enforcement actions;

• Consider IP as an asset to the company: not only as cost for registrationsBUT economic exploitation of IP assets is crucial for business growth innew markets (IP licensing, using IP as collateral for loans etc.).


“KNOW BEFORE YOU GO.

WE ARE HERE TO HELP YOU GROW...”

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


Documents

IPR Landscape in China and South-East Asia...Industrial Design (10 years protection) • Costs: 3500 –11500 euro ... Vietnam. 4.Cambodia, Laos 5.Myanmar ... • Register your trademark