Firms urged to register IP right before branching out

Reportedly some Thai trademarks have already been copied in many Asean countries. In Vietnam, Siam Cement Group’s Elephant brand, Red Bull energy drink, and Universal Balloon have suffered such violations, according to the Intellectual Property Department of the Thai Ministry of Commerce.
At a seminar held by the department on “Intellectual Property Rights Registration in Vietnam”, panellists urged Thai enterprises to register their IP in each target market before beginning trade or starting up businesses. If enterprises do not have IPR protection in those jurisdictions, they will have no legal means to fight against violations, and will lose business opportunities in those countries.
Department director-general Pajchima Tanasanti said enterprises should not consider IPR as a legal tool, but as a marketing tool.
If Thai enterprises become more aware of IPR, they will easily penetrate each target market as consumers have higher concerns about brands and property rights. These Thai firms will also have confidence that their products will be protected under each country’s IPR laws, she said.
Pajchima stressed that with the move to Asean economic integration, countries in the bloc would allow free flow of goods and services, making the need for IPR protection all the more urgent. According to the department, enterprises in Asean member states have become more aware of the need for IPR protection, with registrations of copyright and trademarks growing by an average of 15-20 per cent a year.
Pham Tien Dat, trademark inspector with the Trademark Division of the National Office of Intellectual Property of Vietnam, advised Thai enterprises to register not only trademarks but also the designs of their products and packaging to prevent counterfeiting.
Le Ngoc Lam, director of the office’s Industrial Design Division, said more foreign enterprises had applied for IPR registration in Vietnam since its economy began growing strongly.
He pointed out that Vietnam has effective laws to protect IPR if enterprises have registered their rights with the government. However, it is difficult for the government to punish traders in illegal goods if enterprises have no IPR protection in the country.
Currently, among the design patents registered in Vietnam, about 79 belong to Vietnamese enterprises, 7 per cent to those of Japan, 6 per cent to Taiwanese, 3 per cent to US holders, and the rest to those of other countries, including Thailand and other Asian and European nations.
As of this year, a total of 189 design applications have been filed by Thai enterprises, of which 119 have been granted IPR protection. These include Srithai Superware, LA Bicycle and Siam Kubota.
Preyanuch Somsakraksanti, marketing manager of Universal Balloon, a balloon exporter to Vietnam whose brand has been violated, said the company’s sales had dropped by 50 per cent in that country because of counterfeit goods in the market.

RIGHT TO SUE
Luckily, having registered IPR in Vietnam almost 10 years ago, the company can sue violators and get protection from the Vietnamese Marketing Bureau.
Jakrapan Somsakraksanti, the company’s export manager, said it normally registered its trademark before penetrating each target market. If the firm did not have IPR protection, it could lose market share to illegal traders, he said.
Because of market integration in Asean, Universal Balloon lost sales to counterfeits not only in but also in neighbouring countries including Cambodia and Laos.
The company’s sales of balloons normally grow by 20-30 per cent a year. It now enjoys about Bt100 million in annual sales, with about 30 per cent of its income from exports.
Panadda Sangdoung, a lawyer with P-Plus International Law, suggested that Thai enterprises register their IP rights in all countries where they trade and invest. The cost of registration is about US$800-$1,000 (Bt25,000-Bt31,500) per case for 10 years of protection.