Protecting IPRs at Home
Imagine a situation where you find someone using your trademark on his products without your permission. Not only is it disheartening, but it may also bring a bad repute to your business. The good news is that if you have adequately protected your IPRs, then you can do something to confront and deal with this unpleasant and dangerous situation.
Protecting your intellectual property rights is not a difficult task; however, it needs some preparation, consideration, diligence and regular audit on your part. This section and the one below will help you understand how you can protect you IPRs, not only at home, but also in export markets. The last Section highlight how to protect your unregistered IPRs.
The first step to protect your IP rights is by registering them with your National Intellectual Property Office. Such registration is by far the most effective protection for your IPRs, and it accords them a sort of “legal sanctity”. Registration basically means that your invention, trademark, work or design are yours and yours only (subject to certain exceptions and limitations). This implies that only you can decide by whom and how those rights will be used in the market. It also gives you powerful tools to fight against potential infringers. Registration gives everybody a very strong warning message: DO NOT TOUCH MY IP RIGHTS!
You should recall that while registration is compulsory for securing protection of patents, trademarks and industrial designs, in the case of copyright, registration is optional. Copyright works are automatically protected, and their registration (or more precisely: “deposit”) with your national Copyright Office is advisable particularly if, at some point, you have to prove that you are the owner of that copyrighted work. In other words, deposit is important to facilitate your burden of proof of your ownership.
Let’s now see how to register your IPRs. The first thing to do is to check the website of your national IP office. It systematically contains detailed information about what to do to file patents, trademarks and industrial designs. Most IP offices nowadays provides facilities for online registration. Inevitably, you will have to fill in a form (whether in paper or digital form), providing information about you, as IP owner, and about the IP right for which you seek protection. The procedure will vary depending on whether you are registering a mark, an invention or a design.
- In the case of TRADEMARKS, you will have to provide a sample of the mark and list the products and/or services for which the mark will be used (classified in accordance with the Nice Classification). In this context, there are some precious tools that we highly recommend using:
- ASEAN TMClass, available at https://www.asean-tmclass.org/ec2/. This tool will help you easily identify the correct class/es of the Nice Classification for your products and/or services (or TMClass, available at: https://tmclass.tmdn.org/ec2/ referring to the EUIPO, the offices of the EU Member States and of numerous other partners).
- In order to discover if your proposed mark is available and does not infringe any prior registered marks, you should conduct an “availability” search by using one of the following research tools:
- ASEAN TMView available at: https://www.asean-tmview.org/tmview/welcome.html. This database is very useful to verify if your proposed mark is available and free to register or not in any of the ASEAN countries (with the exception of Myanmar).
- You can also use:
- TMView, available at https://www.tmdn.org/tmview/welcome to check the availability of your proposed mark in all EU countries and in numerous other partner offices (please see full list of participating countries at the above internet address); or
- WIPO Global Brands database, covering trademarks registered in a wide number of countries parties to WIPO, and available at: https://www.wipo.int/branddb/en/index.jsp
- In the case of INDUSTRIAL DESIGNS, in addition to information relating to yourself as applicant, you will have to provide also drawings, photographs or other adequate graphic representations of the industrial design, and an indication of the kinds of products for which the industrial design will be used, classified in accordance with the Locarno Classification. In this context, we suggest using the following tools:
- EUROLOCARNO, available at: https://oami.europa.eu/eurolocarno/ to easily identify the relevant class/es of the Locarno Classification in which your products are classified, and
- DesignView available at: https://www.tmdn.org/tmdsview-web/welcome (and ASEAN DesignView, at http://www.asean-designview.org/designview/welcome) to assess if your proposed design is new or not (if it is not “new”, it would obviously not be eligible to be registered as a protected design).
- In the case of PATENTS, you will have to include in your application one or more so-called “claims” (that define the scope of protection that you are intending to seek for the invention), a description of the invention, drawings if appropriate, and an abstract. You will also have to indicate the relevant class of the Strasbourg Classification (available at: https://www.wipo.int/classifications/ipc/en/) in which your invention falls.
- The (non-compulsory) deposit for COPYRIGHT is normally a very simple and straightforward procedure and you should consult the site of your domestic Copyright office.
For more precise information about the filing processes in the various ASEAN countries, along with Australia and New Zealand, we would invite you to consult the ASEAN “Business Guide to IP Institutions, Laws and Filing Processes in AANZFTA Parties Guide”, available at https://aanzfta.asean.org/ and the country profiles in Section B.3 below. Registering an IP right is not terribly difficult, and often you may get free support from your national IP office. However, particularly in the case of filing patents and industrial designs, the process can be somewhat technical. In all cases, it would be highly advisable that you consult an IP lawyer or agent with solid experience and the expertise to assist you throughout the process
Remember a few important things:
- Your protection generally starts from the date of filing your application with your national IP office (or from an earlier priority date).
- Your registration lasts for a given period. Then, in some cases you can renew your registration:
- Your trademark registration lasts 10 years and can be renewed for additional 10-year terms, indefinitely.
- Your patent lasts 20 years and cannot be renewed.
- Your industrial design registration lasts at least 10 years, but often more (please check duration of protection in your country). Fees are normally payable each five years, up to the maximum duration of protection provided in your domestic law.
- Copyright is protected for the life of the author plus (normally) 50 years, and cannot be renewed after its expiry.
- If you file your IPRs with your national IP office, your IP registrations will only be protected domestically, and NOT in other countries. This is in line with the famous Principle of Territoriality (explained in Chapter I). Therefore, if you want to do business in other countries, you have to get your IPRs protected there before embarking on your export activities. See following Section.
Next page: Protecting IPRs abroad
Go to the Table of Contents