China Business Law Journal offers a brief analysis of intellectual property protection and enforcement in selected countries across the world.
ASEAN
Members of the Association of South East Asian Nations are a disparate group but share high levels of IP violations. “Due to the close proximity between the south east Asian countries, the infringing acts can take place in a few countries simultaneously,” says Ramakrishna Damodharan of Kass International in Kuala Lumpur. “Chinese companies must also be aware of parallel import issues.” The member countries of ASEAN are Brunei Darussalam, Burma (Myanmar), Cambodia, Indonesia, Laos, Malaysia, the Philippines, Singapore, Thailand and Vietnam.
Australia
Developing countries are not the only ones in the Asia-Pacific region that make a good home for creative breaches. In Australia, a group of Indian companies had to deal with an aggressive squatter who realized that some of the best-known Indian consumer trade marks were not registered, says Trevor Choy of Choy Lawyers, a specialist IP firm in Melbourne.
Canada
Canada does not present any significant problems for Chinese companies, says Sheldon Burshtein, a Toronto partner at Blake Cassels & Graydon, which opened a Beijing office in 1998 to advise clients about Canadian law.
Many IP issues in Canada arise out of Chinese corporations’ acquisition of Canadian companies. “International companies should obtain advice regarding competition, tax and other issues, all of which can affect transfers of IP or companies that own IP,” says Bereskin & Parr partner Bhupinder Randhawa in Toronto.
European Union
The European Patent Office, like the US Patent and Trade Mark Office, has onerous formal requirements for the content and amendment of patent specifications. “Of critical importance in extending home-grown IP rights to foreign jurisdictions is ensuring that the original IP rights are drafted to comply with the detailed formal requirements,” says Paul Howard, a partner at Carpmaels & Ransford in London.
Europe has the advantage of a number of markets with broadly similar regulations. Belgium, for example, has a couple of quirks but “is highly integrated in the European and international network of intellectual property protection and regulation via the various governing international treaties,” says Howard Liebman, a partner at Jones Day in Brussels.
Never assume, however, that EU countries have identical legislation. Although Thomas Haffner of Vienna patent agent Haffner & Keschmann describes the Austrian IP regime as “not particularly unique”, legislation in Sweden is not yet fully integrated with EU law and a new trade mark act has been proposed.
But there are few places in the EU where IP owners have difficulty registering their trade marks or other IP – even in the EU’s smaller countries. “Acquiring Irish IP, or companies in Ireland with IP, has proven to be of significant advantage to many Chinese companies,” says Leo Moore, an associate at William Fry in Dublin.
The Netherlands is another small but important location because it “is the main port to Europe and when needed, you want to be able to protect your products directly at the Dutch border,” says Armand Killan, co-managing partner of Bird & Bird in The Hague.
There are various ways to file for protection in Europe, some of which are more effective than others. For example, the Office of Harmonization for the Internal Market (OHIM) can offer protection in all 27 EU members with a single trade mark registration. Filing through the WIPO in Geneva, which administers the Madrid Protocol, can also result in protection in dozens of markets.
These approaches offer the obvious advantage of speed, affordability and practicality from a distance. However, that distance can also work against IP rights holders. “When a problem arises in the form of an official objection or disputes with third parties, they have to quickly enlist the services of a specialized firm,” says Luis Soriano, an associate partner at Elzaburu in Madrid.
Across Europe, meanwhile, border protection for IP rights is improving. “The Customs services in the different EU countries are all fully coordinated [through the Community Customs Code] and thus a single application suffices to institute seamless surveillance along the entire border of the EU and its 27 member countries,” says Soriano at Elzaburu.
An ongoing debate in Europe has to do with whether use of a trade mark in one member of the European Union represents use in all of them. “Many small and medium-sized brand owners would be likely to enter the European market through a single member state,” says Eesheta Shah, a senior associate at Nabarro in London.
The member states of the European Union are Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, the Republic of Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.
France
In France, seizures are an issue in cases of infringement, or even suspected infringement. “Unfortunately foreign companies often discover this very powerful proceeding only when they experience it, at their own prejudice,” says partner Evelyne Roux and Jerome Collin at Cabinet Regimbeau, a Paris-based IP firm that has represented Huawei. (See also European Union, above.)
Greece
Greece has hit the headlines for the wrong reasons in 2010. In IP terms, while the country is a party to all major IP treaties and conventions, delays are a major problem. “A very significant problem of the civil and criminal Greek judicial system is that of unwarranted delays in enforcement, caused due to the frequency of cases’ adjournments,” says Irini Daroussou of A&K Metaxopoulos & Partners, an Athens law firm.
A positive note is the number of public and private initiatives to deepen cooperation between Greece and China. “In general, Greece counts for China as a gateway to the European Union and the West,” says Michael Paroussis, an attorney with Dr Helen G Papaconstantinou John V Filias & Associates in Athens. (See also European Union, above.)
India
For coverage and analysis of IP protection for Chinese companies investing in India, please turn to our regular Correspondents column, IP protection overseas (India), on page 80-81.
Israel
In Israel, IP developed with the help of local academic institutions, state entities or state-affiliated entities is held by the institution unless there is a specific waiver. If the office of the chief scientist provided support, then it has to approve any transfer of ownership, says Yoheved Novogroder-Shoshan at Yigal Arnon & Co in Jerusalem.
Japan
In Japan, received wisdom states that infringement is less rampant than in other countries in the region. “Japanese corporations are always very active to protect and enforce their intellectual property rights against Chinese parties in the Chinese market,” says Kozo Yabe, a patent attorney at Yuasa and Hara in Tokyo.
The reverse is less true. “We rarely see Chinese corporations [enforcing] their rights in Japan,” Yabe adds. There have been cases, however, of companies entering the market that were not quick enough with protection efforts. An infringer registered the name of the Chinese online search engine Baidu in Japan and the company had to spend time and money to get it back.
Kuwait
Kuwait is picky about who gets copyright protection. The Copyright Law “is limited to the works of certain types of authors,” says Sam Habbas, who heads the international department of Al Ruwayeh & Partners, including Kuwaiti nationals, other Arab authors and works published for the first time in Kuwait.
Latin America
Latin America encompasses a diverse group of markets with widely differing IP regimes. Mukundan Chakrapani, a patent agent at Borden Ladner Gervais in Ottawa, says the amount of IP out of China is on the rise in Canada. Bolivia has also seen an influx of Chinese companies looking to protect their IP, according to Perla Koziner, an attorney at Bufete Aguirre in La Paz.
Brazil is the continent’s largest market. “The biggest problems faced by Chinese investors in Brazil are those related to counterfeiting activities,” says Jose Carlos Vaz e Dias of Di Blasi Parente Vaz e Dias & Associados.
Pakistan
In Pakistan, many disputes relate to neighbouring India. “We have seen that some well-known marks and other IP from across the border get registered in Pakistan without the actual owner’s knowledge,” says Khurram Rashid, a partner in the Karachi office of Surridge & Beecheno.
Philippines
Another first-to-file jurisdiction is the Philippines, a country where enforcement issues run the gamut. Companies “encounter difficulty in getting restraining orders against counterfeiters, the possibility of lengthy judicial proceedings, the lack of judicial sanctions against counterfeiters and problems in the implementation of IP laws,” says Anthony Peralta, a senior partner at Cochingyan & Peralta in Manila.
The biggest problem may be delay. “Though the Philippine Intellectual Property Office is considered one of the most efficient government agencies, processing of applications for the grant of trade marks or patents generally still takes years,” says Ramon Esguerra, managing partner of Esguerra & Blanco in Manila.
The Philippines has tried to strengthen its IP laws and regulations “but these efforts are usually watered down when it comes to actual enforcement, mainly because of understaffed bureaucracies, lack of coordination among concerned agencies, red tape, and inconsistent application of laws and rules,” says Bienvenido Somera of Villaraza Cruz Marcelo & Angangco in Manila. (See also ASEAN, above.)
Portugal
Manuel Lopes Rocha, who heads the IP practice at Portuguese firm AM Pereira Sáragga Leal Oliveira Martins, says aggressive piracy and counterfeiting may be the largest challenge. Courts in some EU countries can be slow in responding and, until recently, that was the case in Portugal until the passage of Law 16/2008, which implemented the European Commission’s IP Rights Enforcement Directive (2004/48/EC).
“[This] is a great recent development in Portugal, the great turning point in Portugal,” says Lopes Rocha. “Now we have fast measures provided by law and a totally new framework concerning compensation. An IP owner can now trust Portugal and its courts. The risks from the past have practically disappeared and in some cases our courts are even faster than European standards,” adds Rocha. (See also European Union, above.)
South Africa
Trade mark piracy, when a trade mark is registered by someone without any relationship to the owner, is a recurrent issue in South Africa, says Joseph Lin of Spoor & Fisher in Pretoria.“Trade mark pirating is an increasing problem for Chinese proprietors,” he says.
Spain
The rules in Spain are in line with other EU countries and major international conventions, says Jorge Llevat of Cuatrecasas Gonçalves Pereira in Barcelona. “It has to be taken into account that lack of use may result in some cases in cancellation of a trade mark or compulsory licences being granted (in the case of patents), and it may also affect the ability to ask for interim relief,” Llevat warns.
Spain’s parliament recently passed a new law against IP infringement on the internet, which means websites with illegal content can be quickly shut down.
Lawyers say that Spanish courts started to specialize in IP only a few years ago. Ignacio Temiño, a partner at Abril Abogados in Madrid, says the courts now spend more time on specific issues such as reputation, However, Temiño warns, “the Spanish courts do not acknowledge, nor do they grant any protection for reputed marks which have not been used in Spain.” (See also European Union, above.)
Turkey
In Turkey, unauthorized registrations of trade marks are rampant. “In fact this problem is not specific only to Indian or Chinese companies but a common problem for all foreign companies,” says Uğur Aktekin, a partner at Mehmet Gün & Partners in Istanbul.
United States of America
The biggest producer of IP in the world, the US, has legislation that requires careful analysis.
“We have counselled clients from Asia and elsewhere on the importance of compliance with US IP law,” says Alan Behr, a partner at Alston & Bird in New York. “A particular challenge has been to assist with the requirement of the US Patent and Trade Mark Office that goods and services be listed with great particularity in trade mark applications.”
Behr says Chinese companies need to be aware of the uniqueness of US copyright. “[It] relies heavily on a registration system and has statutory provisions for works made for hire and for fair use – concepts that can sometimes be confusing,” he says. “Problems often arise when Chinese companies seek to protect their IP in the US long after usage here has already commenced.”
Vietnam
Vietnam is another first-to-file jurisdiction and, when companies acquire a trade mark, they have to make sure – not merely assume – that it has been filed, says Do Anh Tuan, an IP lawyer at Russin & Vecchi in Ho Chi Minh City. “If they have developed IP rights, they should register as soon as possible.”
Vietnam’s growing economy makes it attractive for counterfeit products. “The main remedies applied for settlement of infringement over IP rights are administrative ones with penalties that may be considered not adequate to prevent further infringements,” says Dang The Duc, managing partner of Indochine Counsel in Ho Chi Minh City.
Infringers are not necessarily big or identifiable corporations but often small vendors and unregistered companies, says Manh Hung Tran, a partner at Baker & McKenzie in Hanoi. “As the Vietnam market becomes more sophisticated, infringers have also become more IP savvy,” he says.
Administrative, civil, and criminal remedies are available to infringed parties in Vietnam. “However, administrative procedures are currently the most effective way,” says Do Quang Hung, a partner and deputy director of the IP practice at Vision & Associates in Hanoi. (See also ASEAN, above.)
