Intellectual Property Rights Strategies in Southeast Asia: Know Before You Go
The principle issues surrounding Intellectual Property Rights (IPR) development, protection and enforcement are essential to all aspects of your business. Your IPR strategy should be considered one of the main pillars of your business, not unlike your business strategy or HR strategy. A strong IPR strategy and proactive preparation not only helps to prevent IPR-related issues, but may also result in increased revenue as well as more effective and quick enforcement in the case of an infringement.
What is IPR?
Intellectual Property Rights are legally enforceable rights over the use of inventions or other creative works. They confer a right to exclude others from their use. Securing your IPR will help you to prevent and enforce against infringers profiting from your innovation or brand by passing it off as their own. IP falls into the categories of registrable and non-registrable IP rights.
Registrable IP rights are territorial, which means they have to be claimed and asserted in each country individually. Registered IP in another country is not automatically recognised across the ten countries of the ASEAN region (Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam); therefore, it is strongly recommended that you register your IP assets in the country you wish to operate in before entering the market.
The best way to prevent IPR-related issues is to use a layered, holistic IPR protection strategy, which includes protection both by registration of your registrable rights and other methods such as contractual protection (confidentiality agreements, IP protection clauses in employee agreements) and internal security measures (limited access to certain work areas, etc.).
The main types of IP rights are:
Copyright protection is generally provided for written, oral, musical, dramatic, choreographic, artistic, architectural, photographic, cinematographic, audio-visual, graphic works and computer software. While you do not need to register your copyright for protection, you may voluntarily register to prove ownership in some Southeast Asian nations such as Indonesia, Malaysia, Thailand and Vietnam.
A trademark is a sign or name that serves the specific and primary purpose of identifying the goods or services of a producer, thus allowing the consumers to distinguish goods or services of one producer from those of another. You can register either by filing an application directly at the national administrative offices of respective Southeast Asian countries, or by filing an application at the World Intellectual Property Organisation (international application). If you are making an international application, your trade mark may have to be registered in your home country before requesting the extension of the trade mark to an ASEAN country.
A patent is a set of exclusive rights granted to the inventor of a technical solution of a product for a limited amount of time. There are varying patent systems across the ASEAN region; most countries cater for the equivalent of invention patents, which are granted for innovations in the field of technology that are new and inventive over other existing products on the market. Many Southeast Asian countries, such as Vietnam, provide for utility model patents (similar to Utility Patent systems in many European countries) which are generally granted more quickly and require a lesser degree of inventiveness. The original shape, pattern, colour or a combination of these in an object can also be protected by design patents in some ASEAN countries. For specifics in each Southeast Asian nation, please see our IP Country Factsheets.
4. Trade Secrets
Nearly all businesses in all industries and sectors possess trade secrets – a non-registrable form of intellectual property that can ensure your business advantage over competitors. Precisely because a business does not wish to publically disclose their trade secrets by registering them as copyright, trade mark or patent, means a sound internal strategy to prevent them from being accidentally leaked or stolen is essential. If publically divulged, trade secrets enjoy no legal protection, but providing this does not mean they can in theory remain secret (and hence, protected) for an infinite term. The recipe for Coca-Cola is perhaps the classic example of a well-kept trade secret; had the company patented the formula, it would have become public knowledge as soon as the patent had expired. Trade secrets are not currently recognised by all IPR systems in the ASEAN region, but there are practical steps your business can take to keep your crucial information secret.
The Dos and Don’ts of IPR Strategy
- Identify and prioritise your key IP assets. Know which ones are important for your business and how you can effectively protect them.
- Register your IP before entering ASEAN markets. You can deal with infringement more efficiently if you already have protection in the territories.
- Consider putting into place protective measures for your know-how and other unregistrable and registrable rights, such as:
- Signing agreements with business partners which include IPR protection, clearly defining the ownership and transferability of IP.
- Signing non-disclosure agreements with business partners and employees to safeguard your IPR and business secrets.
- Presume that your IPR is automatically protected in the ASEAN region if you already have registrations in other countries
- Assume that IPR is only confined to products. Brochures, websites and other promotional materials can be infringed as well.
- Presume that because the time to get a trade mark granted in the ASEAN region is very long (24-36 months), it means that there is no real use to apply for a trade mark in the region. ASEAN states use the first-to file system (as opposed to the first-to-use), which means that the party who files an application first is the one most likely to become the owner of the trade mark. Awareness of these issues is paramount when devising an entry strategy to the China market.
- Rely on others to register your IPR for you. Don’t leave this to your sourcing partner or manufacturer; do it yourself with the help of an ASEAN-experienced IPR lawyer.
Protecting intellectual property rights is central to maintaining your business’ competitive edge and leveraging value from your innovations. IPR systems differ between Europe and the ASEAN region, and it is essential to plan your internationalisation to the region no matter what level of engagement you foresee. Always remember: ‘Know Before You Go’
The ASEAN IPR SME Helpdesk, co-funded by the European Commission’s Directorate-General for Enterprise and Industry under the Competitiveness and Innovation Framework Programme, supports European Union (EU) small and medium sized enterprises (SMEs) to both protect and enforce their Intellectual Property (IP) rights in or relating to ASEAN, through the provision of free information and services. These take the form of jargon-free, first-line, confidential advice on intellectual property and related issues, plus training, materials and online resources.