SME Case Study (included in the 2016 update of the Guide ‘Top 20 Considerations when entering a new market’)

Background:

An European manufacturer engaged in the green technology industry with a innovative technology is interested in finding an exclusive distributor located in Singapore to expand its business in South-East Asia. The company participated into a programme funded by the European Union helping European companies to establish long-lasting business collaborations in South-East Asia. During the coaching session, it emerged that the company owns a trade mark and few patents in Europe but was not aware of the territorial nature of IP and which actions shall be taken in relation to trade mark and patent registrations in South-East Asia as well as to the negotiations with the local distributor in Singapore. 

The European company was advised by a local IP expert to extend its current trade mark registrations to Singapore and in the countries of South-East Asia that have accessed the Madrid System. Domestic trade mark registrations would also be necessary to ensure trade mark protection.

As far as patents are concerned, the European company shall manage its portfolio to claim priority rights under the Paris Convention and the Patent Convention Treaty (PCT) where applicable.

Lastly, the company would need to conduct negotiations with potential local partner in relation to Non-Disclosure Agreement (NDA) as well as a License and Distribution Agreement for Singapore and selected ASEAN countries. 

Action taken:

The European company applied for trade mark registrations accordingly and simultaneously began negotiations with the local partner including an NDA for the duration of the negotiations in relation to technical information in relation to patents to grant non-disclosure and protect the novelty of the invention.  

Outcome:

The company has received advice to take IP informed decisions in relation to the ASEAN markets of its interest, totaling in five trade mark registrations and designation of three patent application through PCT. Pending the registrations, the negotiations were supported by appropriate contracts valid under the laws of Singapore.

IP Lessons: 

• Consider time to identify your core IP assets and ways to protect them. 

• Know the local rules: consider using local experts to acquire information on international and domestic registrations as well as local practice. 

• Prioritise protection needs and spend strategically. 

• Use NDAs and other types of contracts to protect your IP in new markets.

Source: southeastasia-iprhelpdesk.eu