After all the hard work, time and capital that you have invested in your business, it makes perfect sense to protect every aspect of it. To this effect, ensure that you also secure your intangible assets, like your Intellectual Property, to enjoy exclusive rights over your creative efforts and your business identity.
In fact, your IP strategy should be one of the cornerstones of your business. A strong, proactive IP strategy in Southeast Asia – where you may be looking to start a business, will prevent IP-related issues that may arise later, thwart infringement and help enforce your rights in case infringement by a third party occurs. It will also impact your company’s growth and prevent revenue losses. Eventually, the value of IP protection rests on your company’s ability to effectively enforce its IP rights.
You can read our previous blog post for a better understanding of what is IP.
What are Intellectual Property Rights (IPR)?
Intellectual Property Rights are legal rights aimed at protecting the use of intellectual creations such as inventions, literary, artistic and scientific works, designs, symbols and so on. They usually grant the creator the exclusive right to use their innovation over a certain period of time. Infringement is a very real possibility, which is why securing your IPR will help enforce against third-parties profiting from your creation or brand by using it as their own.
Most of the IP rights, such as patents, trademarks or registered designs can be protected via application with the local registry. On the other hand, copyright, confidential information or trade secrets and circuit layout rights enjoy protection without registration in the majority of countries.
Protection of Intellectual Property Rights is territorial by nature in the sense that registration in one country will not give you rights in other jurisdictions. Hence it is advisable to register your IP in the country you plan to operate, before you enter the market.
You can prevent IP issues by:
1. Registering your IP assets
2. Framing airtight contracts that include confidentiality agreements, IP protection clauses in employee agreements etc.
3. Maintaining internal security measures such as limited access to certain employees, work areas etc.
The main types of IP include:
· Copyrights
A copyright gives the owner of the intellectual property the exclusive right to reproduce, distribute and adapt the work. It covers artistic, photographic, architectural, cinematographic, written work, musical compositions and more. While copyrights fall under non-registrable rights, you can, by choice, register in countries like Indonesia, Malaysia, Thailand and Vietnam to claim ownership of these IP assets.
Read more about copyrights.
· Trademarks
A trademark is any name, sign, symbol or logo of your business, product or service that helps distinguish it from that of others. You should file an application for trademark registration in the country where you wish to conduct business operations. For protection in more than one country, you can file an international application with the World Intellectual Property Organisation (WIPO). It must be noted that you have to register your trademark in your home country before approaching WIPO to extend your coverage overseas. There are various benefits of trademark registration that should prompt you into registering your mark when starting your business.
Read more about trademarks.
· Industrial Designs
This refers to the ornamental aspect of an article, which may be two or three-dimensional in nature. In order to be protected, a design requires to be original.
· Geographical Indications
This is a sign associated with a product of a particular quality or characteristic which is linked to its place of origin. These usually apply to agricultural products, wines, and spirit drinks.
Enforcement of Intellectual Property Rights in Southeast Asia
Due to its rapid economic development, Southeast Asia has become an attractive location for small and medium-sized businesses. However, counterfeiting remains a major problem in the region, which prevents business owners from obtaining proprietary benefits. Also, business-related legislation is not well developed, increasing the risk of IP infringement.
Southeast Asia has recently been working towards enhancing systems for its IP rights protection as well as drawing its existing laws closer to international standards. However, each country in Southeast Asia has its own set of laws regarding IP and there is no uniformity across the entire region. In any case, a careful selection of an effective legal framework as well as business partners will ensure that infringers are kept away.
Legal IPR enforcement options
Here are the legal enforcement options that are available to you in Southeast Asia:
1. Administrative actions
Here, IP misdemeanors are filed with an administrative body instead of a court that has jurisdiction over the enforcement of IPRs. These are suitable for IP issues that may be complicated for regular courts, such as trademarks and patents.
In countries like Malaysia and the Philippines, the administrative offices are also provided with investigative or pseudo-law enforcement powers which make the process faster and more cost-effective.
The reliefs granted by the administrative body in these proceedings could include:
– Granting an injunction
– Award for monetary damages
– Disposal of infringing goods (if the goods pertaining to the case were seized).
2. Civil litigation
Civil litigation is offered in all countries in Southeast Asia. In the case of a civil litigation, the IP owner files a suit in court to gain compensation for third-party infringement of his Intellectual property. This course of action involves high costs and effort and is normally a lengthy process, which is why it is best saved for cases where the commercial damages to be collected are substantial, and when the third-party is in a position to compensate the IP owner for the amount he seeks in compensation.
Civil litigation is best suited to copyright, trademark and patent infringement. Also, to the breach of contract involving trade secrets and confidential information.
The reliefs granted by civil litigation, as with administrative actions, could include:
– Granting an injunction
– Award for monetary damages
– Disposal of infringing goods (if the goods pertaining to the case were seized).
The difference is that since the orders are issued by the court, they bear the persuasiveness of legal force.
3. Criminal actions
This is the most aggressive approach an IP owner can take, because of the presence of law enforcement and in some instances, the use of force. It is available in all jurisdictions in Southeast Asia as well. These actions are typically enforced through a raid, wherein forceful entry to the premises of the suspected infringer is required – which further necessitates securing a warrant.
Criminal cases are instituted in different ways in Southeast Asia, and thereby, a country-specific strategy is required. Costs are generally higher than administrative actions and civil litigation in the light of more intensive legal paperwork, and the participation and coordination with law enforcement. An exception to this is Thailand where this is considered the most cost-effective legal enforcement option.
Criminal actions are best reserved for repeat infringers as well as instances where the infringing products are harmful to the public, such as counterfeit medicine and mislabelled foods.
4. Customs seizures
Customs seizures refer to holding imported or exported goods suspected or found to be counterfeit, at the border control. This could occur in two ways:
– When border control authorities themselves screen for counterfeit goods in their own official capacity
– When the customs seizure is in response to a concern raised by an IP owner. Here the enforcement extends to a particular shipment or cargo.
There are certain limitations, however, with this form of enforcement:
– Generally limited to counterfeit items such as fake products, and does not extend to genuine products imported by an unauthorized importer.
– Success is limited to the vigilance of the border control personnel.
IP recordals with customs are possible in Myanmar, the Philippines, Thailand, and Vietnam on a voluntary basis.
Protecting your Intellectual Property Rights in Southeast Asia
Here are some ways to strengthen your IP strategy and help protect your IPR in this region of the world:
· Identify your key IP assets.
· IP laws are territorial by nature as stated above and registering your IP in one country does not automatically grant you protection in other territories. Register your IP in all required countries before entering the market and starting distributing the goods or offering your services.
· Frame effective non-disclosure and confidentiality agreements that ensure the safety of your non-registrable IP like trade secrets.
· Remember that IPR extend beyond products to websites and other promotional material.
· Get a local name for your trademark.
· Any enforcement option will require you to collect and prepare evidence that supports your ownership of IPR in that particular territory or proof of infringement of your IP rights. Hence working closely with the authorities in the enforcement process should be noted.
Southeast Asia reflects developing economies and changing laws, which makes IPR enforcement a challenge. SMEs that are looking to protect their Intellectual Property Rights in this region of the world are advised to consult with legal service providers having local knowledge and expertise in order to achieve their desired results with IPR enforcement.
At IPHub Asia, we help businesses register their trademarks and maintain their IP rights. If you have any questions regarding your Intellectual Property Rights in Southeast Asia, please get in touch. You can also visit our website to learn more about our services.
