LATEST NEWS

MY BUSINESS IN ASIA

Structuring Intellectual Property Ownership in Asia

“Intellectual Property Rights” (“IPR”) commonly designate intangible property rights such as trademarks, patents, designs and copyrights. IPR affects a lot of different aspects of our daily lives, for example the brand-name fashion we buy, the pop songs we listen to, the movies we watch and the computer software we use.

The technical definitions of different aspects of IPR are common worldwide, and are clarified in more detail below. Each country in Asia and elsewhere will have its own internal laws and regulations governing IPR protection and registration and administration procedures. IPR may form a significant part of the value of any business, and enterprises operating in Asia must ensure that their valuable IPR are well secured in each country in which they operate. 

TRADEMARKS
 
A trademark designates any recognizable sign(s) used to indicate the origin of the goods and services and to distinguish such goods and services from those of another trader. Trademarks can consist of words, phrases, letters, numbers, shapes, logos, pictures, or a combination of such distinctive signs. A registered trademark confers upon its owner the exclusive legal right to use, license or sell products or render services within the territory of registration. Generally, trademarks can be protected without time restriction, as long as their owner continues using such trademarks for trading and keeps paying registration fees.

For registration purposes, a trademark shall be registered for specific categories of products and/or services. The international classification defined under the Nice Agreement (the “Nice Classification”) is most commonly used worldwide. It sets out 34 classes of goods and 11 classes of services, each of them comprising many sub-classes. Since trademarks are protected geographically, their owners shall in principle ensure registration in each country where they intend to do business. Applying in several jurisdiction can be time consuming and quite expensive. Alternatively, companies which intend to use their trademarks internationally can opt for (i) a Community Trademark (CTM), which allows the applicant to register a trademark throughout the European Union in one application, by paying just one fee, or (ii) International Registration, which can be done through the Madrid Protocol (including 86 countries), which enables the applicant to file a trademark in its home country and then extend the filing later to other jurisdictions throughout the world. The Madrid Protocol still requires payment of separate registration fees in each country. Nonetheless, it remains a smart and relatively inexpensive option. Applicants shall bear in mind that trademark protection remains national and that, even using a CTM or International Registration, each designated country will apply its own examination criteria.

PATENTS 

A patent is a monopoly of use, awarded to the owner of a new and previously undisclosed invention. It grants the owner the right to exclude others from making, using or selling the invention without its permission. Patentable materials can include machines, manufactured articles, industrial processes, chemical compositions. Patents are critically important in ensuring that owners and investors obtain financial returns on their investments. Patents enjoy a territorial protection, and are only protected in the countries where they are legally registered. They have limited life duration. More often, patent protection is awarded for about 20 years. Such restriction aims at ensuring that others can access inventions, after a reasonable time enabling amortization of research and development costs.

Since patents enjoy a territorial protection, they shall in principle be registered in each country where their owner intends to protect their use. Meanwhile, at the early stage of the process, it might be difficult to anticipate in which countries business opportunities will arise. Conducting simultaneous filing in all countries that are of potential interest can be complicated and costly. Alternatively, inventors can choose to file an application under one of the following international treaty: (i) the Patent Cooperation Treaty (“PCT”), (ii) the Paris Convention, or (iii) the European Patent Convention (“EPC”). Both procedures enable applicants to file a single application in their home country, while preserving their rights in other countries. However, protection remains national and each designated country will apply its own regulation in examining the patent application. Besides, applicants extending their patent application in other countries are entitled to claim the filing date of their first application (the “priority date”) as the effective date of their later applications. The delay for claiming such priority date lets applicants perform market researches, seek funding, and turn their idea into a commercial product. Each of the PCT, Paris Convention and EPC presents specific features and we highly recommend inventors to seek professional advice.

DESIGNS

An industrial design designates features of shape, configuration, pattern, or ornamental aspects of useful objects. Such aspects may include two-dimensional elements (i.e. lines, designs, colors) or three-dimensional elements (i.e. the shape of the object), but shall not solely be dictated by the function for which the related object is intended. Designs can be registered for a wide range of products, including computers, telephones, CD-players, textiles, jewelry and watches. Registered designs protect only the appearance of products. The function for which products are intended may be protected by a patent or copyrights. Designs enjoy a territorial protection, and need to be registered in every country where their owner is willing to use them. Designs are protected for a limited duration, which generally ranges between 20 to 25 years.

Since many commercial articles are sold and/or manufactured internationally, registration of designs in multiple jurisdictions is generally desirable. In order to avoid the complexity and costs of simultaneous national applications, applicants can choose to enjoy the provisions of the Hague System for International Registration of Industrial Designs (the “Hague System”). It allows applicants to file a single application in their home country, while designating other countries where protection is sought. However, protection remains national and each designated country will apply its own regulation in examining the application and granting design protection.

COPYRIGHTS

Copyrights grant the author of an original work, exclusive rights to use, license or sell such work. Copyrights apply to a wide range of creative, intellectual or artistic works, such as songs, books, movies, and other works of Art. Copyrights do not protect ideas and information themselves. They can only protect the form or manner in which the latter are expressed. Protection of copyrights generally lasts the lifetime of the author plus an additional period of 50 to 100 years. Once the term of copyrights has expired, the copyrighted works enter the public domain and can be freely used or exploited by anyone. 
 
In principle, copyrights enjoy a territorial protection, and are only protected in the countries where they are registered. However, certain countries (including all the signatories of the Berne Convention) consider that a copyright exists the moment a work is "fixed", rather than requiring registration. Authors shall therefore check which system is in force in the territory where they intend to enjoy protection of their work.

January 2016
Any further inquiry, please contact us.