Ananda - Intellectual Property - Bangkok Entrepreneurs - March 2013

INTELLECTUAL PROPERTY: 5 THINGS EVERY

ENTREPRENEUR SHOULD KNOW

FRANCK FOUGERE

MARCH MEETUP- BANGKOK ENTREPRENEURS MARCH 18, 2013

5 THINGS EVERY ENTREPRENEUR SHOULD KNOW:

1) HOW TO IDENTIFY YOUR IP RIGHTS/ASSETS

2) HOW TO PROTECT YOUR INTANGIBLE ASSETS

3) WHY PROTECTING IP

4) HOW TO ENFORCE YOUR RIGHTS

5) HOW TO EXPLOIT YOUR IP

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IDENTIFY YOUR IP ASSETS

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4

IDENTIFY IP ASSETS

TRADEMARKS

OTHER IP COPYRIGHT DESIGNS

DOMAIN NAMES KNOW-HOW KNOW-WHY

TRADE SECRETS GEOGRAPHICAL INDICATIONS

PLANTS BREEDER’S RIGHT INTEGRATED CIRCUIT LAYOUT TRADITIONAL KNOWLEDGE…

PATENTS

BOOKS / PRESS ARTICLES SOFTWARE / DATABASES MUSIC PHOTOGRAPHS WEB PAGES PICTURES SCULPTURES MULTIMEDIA WORKS ...

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WHAT IS A MARK?

ANY SIGN THAT CAN BE REPRESENTED GRAPHICALLY (WORDS, SYMBOLS, IMAGES, ETC...) WHICH IS USED TO DIFFERENTIATE IN THE MARKET PRODUCTS OR SERVICES FROM DIFFERENT COMPANIES.

TO BE VALID THE SIGN SHALL BE DISTINCTIVE AND AVAILABLE AND NOT PROHIBITED BY LAW.

RULES OF TERRITORIALITY AND SPECIALITY (GOODS/SERVICES)

TRADEMARKS ARE USUALLY PROTECTED FOR 10 YEARS AND RENEWABLE. IT IS RECOMMENDED TO USE A REGISTERED MARK AT LEAST ONCE EVERY 3 OR 5 YEARS (DEPENDING ON APPLICABLE LAWS).

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LANCOME

Semi figurative marks

MERCEDES-BENZ

Word marks

NIKE

WHAT IS A MARK?

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Figurative marks

Three dimensional marks

WHAT IS A MARK?

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Non-traditional marks

Smells marks Sound marks Taste marks Holograms Moving marks (ex. gif applications)

WHAT IS A MARK?

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WHAT IS A PATENT?

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A PATENT COVERS THE FUNCTION, OPERATION OR CONSTRUCTION OF AN INVENTION. TO BE PATENTABLE, A FUNCTION MUST BE INNOVATIVE, HAVE AN INDUSTRIAL APPLICATION AND BE DESCRIBED IN SUCH A FASHION TO PERMIT REPRODUCTION OF THE PROCESS.

PATENTS FOR

INVENTION

WHAT IS A PATENT?

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A DESIGN ONLY COVERS THE APPEARANCE OF A PRODUCT.

A DESIGN CANNOT PROTECT THE FUNCTION OF A PRODUCT.

DESIGN PATENTS

WHAT IS A DESIGN PATENT / INDUSTRIAL DESIGN?

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PETTY PATENTS

NEW INVENTION WHICH WOULD QUALIFY FOR AN INVENTION PATENT EXCEPT THAT IT HAS NO STRONG, TECHNICAL INNOVATIVE STEP. EASIER TO OBTAIN BUT SHORTER PROTECTION PERIOD AND NOT AVAILABLE IN EVERY COUNTRY.

IN THAILAND NO NOVELTY CHECK FOR PETTY PATENTS.

WHAT IS A PETTY PATENT / UTILITY MODEL?

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COPYRIGHT PROTECTION EXTENDS TO A WIDE RANGE PHYSICAL EXPRESSIONS OF IDEAS INCLUDING THE FOLLOWING. • LITERARY WORKS (ADVERTISEMENTS, BOOKS, MAGAZINES,

NEWSPAPERS…) • COMPUTER SOFTWARE • MUSICAL WORKS • DRAMATIC WORKS (CHOREOGRAPHY, DANCING, ACTING…) • ARTISTIC WORKS (SUCH AS WORKS OF PAINTING AND DRAWING,

SCULPTURES, LITHOGRAPHY, WORKS OF ARCHITECTURE, PHOTOGRAPHIC WORKS, ILLUSTRATIONS, OTHER FORMS OF APPLIED ARTS)

• AUDIOVISUAL WORKS • CINEMATOGRAPHIC WORKS • AUDIO RECORDINGS • BROADCAST WORKS

WHAT IS A COPYRIGHT?

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IT IS THE EXPRESSION OF THE IDEA AND NOT THE IDEA ITSELF THAT IS PROTECTED, IN OTHER WORDS, A COPYRIGHT PROTECTS THE FORM OF EXPRESSION RATHER THAN THE SUBJECT MATTER OF THE WORK AND A CONCRETE ‘VERSION’ IS ALWAYS NECESSARY.

COPYRIGHT DOES NOT PROTECT IDEAS OR PROCEDURES, PROCESSES OR SYSTEMS OR METHODS OF USE OR OPERATION OR CONCEPT, PRINCIPLES, DISCOVERIES OR SCIENTIFIC OR MATHEMATICAL THEORIES.

PROTECTION LAST 50 TO 70 YEARS AFTER DEATH OF THE AUTHOR.

WHAT IS A COPYRIGHT?

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A TRADE SECRET IS A CONFIDENTIAL FORMULA, PRACTICE, PROCESS, DESIGN, INSTRUMENT, PATTERN, OR COMPILATION OF INFORMATION USED BY AN ENTERPRISE TO OBTAIN AN ADVANTAGE OVER COMPETITORS WITHIN THE SAME INDUSTRY OR PROFESSION. IN SOME JURISDICTIONS SUCH SECRETS ARE REFERRED TO AS "CONFIDENTIAL INFORMATION", WHILE IN OTHERS THEY ARE A SUBSET OR EXAMPLE OF CONFIDENTIAL INFORMATION. AN EXAMPLE OF THIS WOULD BE THE FORMULA OR RECIPE OF A PRODUCT E.G. COCA COLA.

REGISTRATION OF TRADE SECRETS IS AVAILABLE IN SOME COUNTRIES.

WHAT IS A TRADE SECRET?

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PRACTICAL TIPS • START BY IDENTIFY YOUR IP ASSETS • PRIORITIZE YOUR PROTECTION NEEDS • ESTABLISH CLEAR IP PROTECTION STRATEGY TO MATCH YOUR

BUSINESS OBJECTIVES • CHECK THE ENVIRONMENT TO ENSURE YOU CAN FREELY USE YOUR

INTELLECTUAL PROPERTY (TM SEARCH, FREEDOM TO OPERATE, PRIOR ART SEARCHES ETC.)

• CHECK YOUR COMPETITORS’ RIGHTS • CARRY OUT VULNERABILITY/LEGAL/TECHNICAL AUDITS • ENSURE THAT YOU CONTROL THE DISCLOSURE AND OWNERSHIP OF

YOUR IP ASSETS THROUGH CONTRACTUAL PROTECTION (LICENSE IN/OUT, CONFIDENTIALITY AGREEMENTS, EMPLOYMENT AGREEMENTS, MANUFACTURE AND DISTRIBUTION AGREEMENTS, STRATEGIC PARTNERSHIP AGREEMENTS, R&D AGREEMENTS, JV AGREEMENTS)

• CHECK DOMAIN NAMES AVAILABILITY/SOCIAL NETWORK IDENTITIES ETC.

HOW TO PROTECT YOUR INTANGIBLE ASSETS

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STEP 1: IDENTIFY TERRITORIES

PRODUCTION/COMMERCIALISATION / RISK OF COUNTERFEITING / STRATEGIC COUNTRIES

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STEP 2: LIST YOUR PRIORITIES AND OBJECTIVES

(PROTECTION, COMPETITIVE ADVANTAGE / BLOCK YOUR COMPETITORS /LICENSING / FRANCHISING / INCREASE VALUE OF IP ASSETS / TAX PURPOSE /OTHERS?)

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STEP 3: COMPARE REGISTRATION PROCEDURES AND CHOOSE A FILING STRATEGY (NATIONAL/REGIONAL/INTERNATIONAL)

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Type of IP right National filing Regional filing International application

Trademarks Yes always available

Yes ex: Community Trademark in Europe

Not available yet for Thai applicants but available in 84 countries (“Madrid system)

Patents for Invention

Yes always available

Yes ex: European Patent (EPO)

Yes, through the PCT (Patent Cooperation Treaty)

Petty Patents Not available in every country/harmonized

no no

Design Patents Yes in most countries but not fully harmonized

Yes ex; Community Design in Europe

Not available yet for Thai applicants (“Hague System”)

Copyright Yes and produce effect worldwide (166 countries)

N/A N/A

STEP 4: COMPLETE YOUR IP FILING STRATEGY WITH CONTRACTS

MOUS CONFIDENTIALITY EMPLOYMENT PROTOTYPING/WORK-FOR-HIRE/MANUFACTURE/DISTRIBUTION/R&D/JV/SHAREHOLDER AGREEMENT/MODEL AGREEMENT/END-USER SOFTWARE AGREEMENT/ TERMS OF USE ETC. LICENSE/FRANCHISING

ETC. 22

WHY PROTECTING IP?

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COUNTERFEITING

CREATE A CONFUSION BETWEEN ORIGINAL PRODUCT AND COUNTERFEIT PRODUCT TO:

- TAKE OVER IP RIGHTS, TECHNOLOGY OR KNOW-HOW;

- APPROPRIATE A BRAND IMAGE/NOTORIETY

- PROFIT FROM INVESTMENTS MADE BY ORIGINAL OWNER (MARKETING/R&D ETC…)

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A LONG STORY …

ROMAN AMPHORA (MUSEUM OF COUNTERFEIT GOODS, PARIS)

« CHINESE CALLIGRAPHY » ART OF COPY

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1970-1980

producing consuming

©Christophe Zimmermann DG TAXUD

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producing consuming

1980-1990

©Christophe Zimmermann DG TAXUD

28 ©Christophe Zimmermann DG TAXUD

1990-2000

producing consuming

29 ©Christophe Zimmermann DG TAXUD

producing consuming

Today

TODAY…

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INDUSTRIAL SCALE OF COUNTERFEIT PRODUCTS

HAMBURG, 170 CONTAINERS OF COUNTERFEIT SPORT SHOES 31

32 ©CHRISTOPHE ZIMMERMANN- EUROPEAN COMMISSION DG TAXUD 2006

CASE STUDY


CASE STUDY


CASE STUDY

CASE STUDY


CASE STUDY


CASE STUDY


CASE STUDY


METHODS OF CONCEALMENT












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« SQNY » « IVIKE »


THE GREY ZONE: PASSING-OF

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« Adidos »


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Mercedes Classe C vs Geely Merrie 300


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Daewoo Matiz vs Chery QQ


52 Smart vs. Chinese Smart


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BMW 7 vs BYD F6


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BMW vs BYD


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« Kentucky fried goose? »

AND FOR DESSERT…

A FEW NUMBERS…

- 250 BILLION DOLLARS PER YEAR (2009) OR ABOUT 7% OF GLOBAL TRADE

- FAKE MEDICINES REPRESENT 10% OF WORLD PHARMACEUTICAL MARKET (WHO)

- 11% OF COUNTERFEIT GOODS SEIZED AT EU BORDER ARE CONSIDERED DANGEROUS

- IN A FEW ASIAN COUNTRIES (SUCH AS CAMBODIA) SOME MEDICINES ARE WIDELY COUNTERFEIT (MORE THAN 50% FOR ARTESUNATE IN RURAL AREAS)

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FOOD PRODUCTS

• MORE THAN 2 MILLION COUNTERFEIT FOOD PRODUCTS SEIZED AT EU BORDERS EVERY YEAR

• BABY MILK (DOZEN OF DEATHS IN CHINA), FANTA,

• FAKE TUNA IN THAILAND EXPORTED TO THE MIDDLE-EAST

• REFILLING ISSUES (ALCOHOL)

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TOYS

• 12% OF EUROPEAN MARKET • LEAD • FAKE BATTERIES

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- TRADEMARK AVAILABILITY LOOSE PART/ALL OF YOUR INVESTMENT/MARKETING EFFORTS+RISK OF

COUNTERFEITING SOMEONE’S ELSE BRAND.

- TRADEMARK SQUATTING: EXTREMELY FREQUENT ESPECIALLY IN ASIA (CHINA) 3 MAIN RISKS: PURCHASE YOUR OWN BRAND PROHIBITED TO USE YOUR OWN BRAND DILUTION

- IP OWNERSHIP ISSUES: WHO OWNS THE IP? EMPLOYEES/PARTNERS/CLIENTS?

- NO IP PROTECTION MEANS NO EXCLUSIVITY 59

COMMON RISKS OF NOT PROTECTING IP FOR START-UPS COMPANIES

HOW TO ENFORCE

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PRACTICAL TIPS • THINK TWICE: CHECK YOUR RIGHTS / CHECK ALLEGED INFRINGER

RIGHTS / PRIORITIZE AND EVALUATE COSTS & BENEFITS/CHECK INFRINGER FINANCIAL ASSETS.

• GATHER EVIDENCES OF INFRINGEMENT/INVESTIGATE TO HIT THE RIGHT TARGET

• RANK YOUR ENFORCEMENT OPTIONS AND PRIORITIES: - CRIMINAL CASE: STOP INFRINGEMENT (EX: 400K THB FOR TM

INFRINGEMENT MAXIMUM FINE)- POLICE RAID AND IPIT COURT - CIVIL CASE: CLAIM COMPENSATION FOR DAMAGES (USUALLY

INTRODUCED AFTER A POLICE RAID) - CUSTOMS: EX-OFFICIO OR NOTIFICATION - MEDIATION: USEFUL FOR PATENT/COPYRIGHT INFRINGEMENT CASES • KEEP IN MIND: WHAT THE LAW SAYS IS NOT WHAT YOU ALWAYS GET

(SEE FOR EXAMPLE PRELIMINARY INJUNCTIONS ETC.) • BE FLEXIBLE (TURN A COUNTERFEITER INTO A BUSINESS PARTNER?) • BE PERSISTENT

HOW TO EXPLOIT

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PRACTICAL TIPS • IP RIGHTS GIVE YOU AN EXCLUSIVE RIGHT TO SELL, PROPOSE FOR

SALE, IMPORT/ EXPORT, USE AND/OR MANUFACTURE THE PROTECTED IP ASSET. YOU CAN CHOOSE TO EXPLOIT SUCH EXCLUSIVITY DIRECTLY (EX: SALE OF YOUR PRODUCTS/SERVICES INCORPORATING YOUR IP ASSETS) OR TO LICENSE/FRANCHISE/COMMERCIALIZE YOUR IP ASSETS

• REGARDING LICENSE OR FRANCHISE AGREEMENTS, CHECK WHETHER THEY NEED TO BE RECORDED, MAKE SURE YOUR AGREEMENTS DO NOT CONTAIN PROVISIONS RESTRICTING FAIR COMPETITION

• LOOK IF YOU CAN OPTIMIZE FROM A FISCAL POINT OF VIEW, REVENUES (ROYALTIES) FROM YOUR IP ASSETS

• PUT A VALUE ON YOUR IP ASSETS AND MAKE SURE THAT YOU HAVE A CLEAR STRATEGY TO INCREASE THE VALUE OF YOUR IP ASSETS- THESE MIGHT BE VERY VALUABLE AND ATTRACTIVE FOR INVESTORS

One of Thailand top IP firms (Tier 2/Tier 3)

Winner of 2013 International Law Office Award - Client Choice Award (IP-Patent)

Leading IP Practitioner (Legal 500, Asia Law and WTR 1000), Franck Fougere

CONTACT US

Ananda Intellectual Property Limited

53/3, 4th Floor, A-4 | Goldenland Building | Soi Mahardlekluang 1 Rajdamri Road, Lumpini, Phathumwan | Bangkok 10330, Thailand

T: +66(0)2 684 1145 | F: +66(0)2 684 5990 | E: [email protected] www.ananda-ip.com

THANK YOU!

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Ananda - Intellectual Property - Bangkok Entrepreneurs - March 2013