FAQs

A well-designed product can be synonymous with the image of your undertaking, and thus become a valuable asset for you. If you do not protect your design, others may benefit from your intellectual property by counterfeiting your products.

A patent is an exclusive right granted by countries for the protection of (1) new inventions, whether products or processes, that (2) offer a new technical solution or provide a new way of doing something and (3) can be applied in industry. Protection lasts a limited period of time, usually 20 years. In return for this limited monopoly, the owner of a patent must disclose the invention to the public in the patent application. A patent is a territorial right and has its effects within the national boundaries of the country for which it was granted.

In order to get patent protection, inventors must file a patent application, since registration is a requirement in order to obtain protection.

Conducting patent searches is very useful for several purposes, not only for organisations such as SMEs, but also for researchers. Indeed, patent databases are a goldmine of technical and commercial information that can be used to:

• guide the definition of an organisation’s IP strategy (identifying, for example, any barriers to developing an IP strategy, the avoidance of obstacles, etc.);
• define the state of the art (to find out what already exists, to check novelty, to improve the quality of a patent application, to understand the IP landscape surrounding your projects and IP);
• check for freedom to operate (to check if you do not infringe someone else's rights, or to search for the validity of third parties’ IP);
• check if someone is not in a position of infringing your rights (infringement still needs to be proved);
• keep track on who’s doing what (commercial intelligence).

Many of the patent applications that you can find in the databases are not even “in force” and therefore are free to be used in your own projects. This can happen for different reasons, such as the application's failure, withdrawal or expiry.

No. An invention in all fields of technology can be protected, but it must meet the following requirements:
1. Novelty: it must show a new characteristic which is not known in the existing knowledge in its technical field - that is, not being part of the state of the art;
2. Inventive step: the invention cannot be deduced by a person with average knowledge of the technical field;
3. Practical use: it must be capable of industrial application.
Countries may also deny, under their laws, patent protection to determined subject matters or types of inventions such as mathematical methods, scientific theories, software, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment.
For inventions that do not fulfill aforementioned standards for a patent protection, the national laws of certain ASEAN countries (e.g. law of Indonesia) foresee protection in the form of trade secrets, provided that the inventions are confidential, have economic value and necessary measures are taken to guard their secrecy.

Copyright protects works such as:
- literary works- novels, song lyrics, newspaper articles;
- computer programs, certain types of database;
- dramatic works- dance or mime;
- musical works;
- artistic works- paintings, photographs, sculptures, architectural designs, technical drawings, diagrams, maps, logos;
- layouts or typographical arrangements;
- recordings of a work - recorded music performances;
- broadcasts of a work.
According to a well-established principle, copyright protection extends only to physical expressions, not to ideas, procedures, methods of operation or mathematical concepts as such.

Copyright is an intellectual property right, which entitles the owners of literary and artistic works to a set of exclusive rights over their works. These rights, generally, include:
- copying;
- translating;
- adapting and altering;
- communicating and performing to the public;
- distributing;
- renting and lending copies.
Copyright grants two kinds of prerogatives:
- economic rights;
- moral rights;
So-called "economic rights" enable right holders to control (license) the use of their works, and be remunerated for their use. These rights normally take the form of exclusive rights and include the right to reproduce and communicate the work to the public.
The author of a copyrighted work also has the right to claim authorship, as well as the right to object to a distortion and mutilation of the work that may be detrimental to his honour or reputation. These rights are generally known as “moral rights”. Moral rights may include the right to decide on when or whether to make the work public, the right to claim authorship of the work and the right to object to any derogatory action in relation to the work.

Registered copyright does not refer to a different type of intellectual property right, but to copyright that has been registered under the voluntary system of registration. Although copyright is an automatic right that does not depend on registration, in some countries (e.g. Cambodia or Indonesia), national laws allow registration of artistic/literary works. This voluntary system of registration is generally aimed at identifying the work and serving as evidence in court in litigation disputes (e.g. in order to prove more easily the date of creation of the work and the ownership); it does not prove authorship.

WIPO Lex is a data base maintained by the World Intellectual Property Organization where you can find an overview of the national laws and treaties on intellectual property (IP) together with the English translations of WIPO, WTO and UN Members, and thus, in all Member States of ASEAN (http://www.wipo.int/wipolex/en/).
National IP offices can be also a valuable source of information. In the website of the World Intellectual Property Organization (WIPO), there is a Directory of Intellectual Property Offices where you can find the contact details of all IP offices in the ASEAN (http://www.wipo.int/directory/en/urls.jsp).
Furthermore, ASEAN SME IPR Helpdesk Country Factsheets provide you with an overview of key IP considerations for each ASEAN nation (http://www.asean-iprhelpdesk.eu/?q=en/country-factsheets#sthash.9LnBscpM.dpuf)

Intellectual property is created by most companies, whatever business they are involved in. For many, intellectual property can be their most important asset (e.g. startup or spin out companies).
Safeguarding this possession is, thus, vital and can offer SMEs many opportunities, in particular:

• to have an exclusive set of rights in the market over their creations (for example, a patented invention allows a monopoly of twenty years, and means that a patent provides its owner with a right to prevent or exclude all others from commercially using it);
• to obtain higher returns on their investments, since owning intellectual property rights may not only enhance the bargaining power, but may also be exploited through licenses in return for royalty payments;
• to enhance the market value and increase future profit expectations of an organisation in the eyes of investors and financing institutions.

It is therefore essential that SMEs consider protecting their creations through intellectual property rights and contractual mechanisms thereby efficiently managing these assets and reaping the most from their investment.

A trade mark registration is performed in a specific area - always in connection with certain products and/or services offered by its owner. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is an international classification of goods and services - it groups goods and services into thematic classes for the purposes of the registration of trade marks. The heading of each class indicates the products or services included.

Trade mark searches are extremely important and typically designed to determine whether a particular trade mark is available for use on a relevant territory. A trade mark search is an investigation to discover potential conflicts between a proposed mark and existing ones. Searches help to determine if you can register your trade mark on a relevant territory. The search may identify trade marks that are visually, phonetically, or conceptually the same or similar to the trade mark to be adopted and that cover the same or similar goods or services. The report will determine all identical or similar marks and the products or services in relation to which they are used. Conducting searches helps to avoid objections and reduces the possibility of infringement of the rights of a prior user or registrant.

Copyright is a right given automatically by law to the owner without the need for him/her to register the right. There is no registry or any department in Brunei that accepts the registration of copyrights.

The duration of legal protection varies according to the nature of the copyrighted material:

• Literary, dramatic, musical and artistic works - 50 years from the end of the year in which the author dies;
• Computer-generated works - 50 years from the end of the year in which the author dies;
• Sound recordings or films - 50 years from the end of the year in which it was made or, if it was released earlier, 50 years from the end of the year in which it was released;
• Broadcasts and cable programs - 50 years from the end of the year in which they were first broadcast or transmitted;
• Typographical arrangement (i.e. how the words and pictures are arranged on a page) of a published edition - 25 years from the end of the year in which it was first published.

The author is usually the first owner of any copyright. However, if the author is an employee who created the work in the course of employment, then the employer is the first owner of the copyright.

An industrial design is protected for an initial period of 5 years beginning from the filing date. The design can be renewed for a further period of 10 years subject to the payment of a renewal fee every 5 years.

A patent which has been registered is given a term of 20 years from the date of filing, subject to payment of annual renewal fees. However, a patent owner may apply for an extension of the term on the following grounds:
a) There was an unreasonable delay on part of the Registrar in granting the patent. It is estimated that a patent should be granted within four years. Any longer would potentially constitute an unreasonable delay.
b) There was an unreasonable delay on the part of any prescribed patent office in granting the corresponding patent. This would include any patent office within a country that is part of the Paris Convention or a member of the World Trade Organization.
c) There were unreasonable obstacles to exploiting the patent caused by the process of obtaining marketing approval for a pharmaceutical product. This is for cases where a patent includes an active ingredient of any pharmaceutical product which requires marketing approval.
A patent owner may lose his rights if the patent is not renewed annually and it lapses.

There are no restrictions based on nationality or residency in applying for a patent in Brunei. However, a foreign applicant is required to file through an authorised representative with a local address in Brunei. The application and supporting documents must be submitted in English.
The first step an applicant should take is to request for a patent to be granted by filing the relevant statutory forms together with the specifications of the invention including the description, drawings and claims.
Once the Registrar gives notification that all formalities are met, the applicant then files a request for a search report and subsequently an examination report. The search report is a search for any relevant prior art carried out by an examiner under the Registrar. The examination report ensures that all relevant provisions have been complied with.
The applicant lastly files the Request for the Grant Certificate when the application is published in the Patent Journal to receive the Certificate of Grant of the Patent if the application is all in order and no amendments are required to be made.
An applicant who has earlier filed a patent in a country of the Paris Convention or a WTO member country may claim priority based on the earlier application in the subsequent application in Brunei Darussalam, if the application was made within twelve months and not published. The application process is the same as outlined above, however the applicant has priority in this case assuming that no other application has been made in Brunei before the applicant filed his/her patent in the foreign country in question.
It is also possible for granted or pending foreign patents to enjoy protection in Brunei via a process called ‘re-registration’ (automatic grant of the patent in Brunei) under the transitional provisions of the new ‘Patents Order’ – these are temporary provisions put in place to cover the transition period between the old ‘Invention Act’ and the new ‘Patent Order’ in Brunei, which came into force 1 January 2012. This however only applies to patents originating from Malaysia, Singapore or the United Kingdom (including EU granted patents originating from the UK). If the patent was granted 3 years prior to 1 January 2012, it may be ‘re-registered’ in Brunei automatically, but this will only be allowed until 2014. If the patent was still pending grant on 1 January 2012, there is a period of 12 months from the date on which the patent was granted to apply for ‘re-registration’ in Brunei. The fees for ‘re-registration’ are significantly lower than normal patent applications made under the Patent Order. For the re-registration of a Malaysian, Singaporean, or UK granted patent, a certified true copy confirming the grant must be submitted along with the appointment to an agent (Patents Form 1). The responsible authority dealing with patents, along with their contact details are as follows:

Brunei Intellectual Property Office (BruIPO)
4th Floor, Block 2D
Jalan Kumbang Pasang
Bandar Seri Begawan BA1311
Negara Brunei Darussalam
Tel: (673) 2230111
Email : [email protected]
The cost of registering a patent depends on the type of registration:

• For the ‘re-registration’ of a Malaysian, Singapore or UK granted patent, the total cost (including official fee, disbursements and legal fee) is about € 685 (B$ 1,100).
• For a national application of a patent, the cost is about € 3,105 (B$ 5,000).
• The law regarding patents is new, thus, it is not possible to give an estimate regarding the cost for international applications.

Any trade mark considered well-known under the Paris Convention and belonging to a resident of a Paris Convention country, a person domiciled or a person having a real and effective industrial or commercial establishment in a convention country, may be protected whether or not that person carries out any business or has any goodwill in Brunei.

There is no need to register copyrights since the copyright protection arises automatically when the work is created. However, a copyright may be voluntarily registered with the Ministry of Culture and Fine Arts at the following address:
Ministry of Culture and Fine Arts
Address: #227, Norodom Blvd., Phnom Penh
Phone: (855)23 217645
Fax: (855)23 725749
E-Mail: [email protected]

Applications and supporting documents may be submitted in Khmer or English (documents in other languages are accepted if a Khmer or English translation is provided). An application for registration must contain the following:
1. A record of the author’s real name;
2. The date when the work was first published;
3. The date when the work was created;
4. A record of the author’s right.
The Ministry of Culture and Fine Arts will then issue a Certificate of Registration (provided that the application is complete). It should be noted that a copyright owner with a registered right is not granted any particular benefits by law. However, a registration certificate may serve as evidence in future administrative or judicial proceedings and can therefore prove extremely useful.

Class of Work Fee (in Cambodian Riels):

• Books, articles, drawings, photos, maps – KHR 20,000
• Architectural works – KHR 60,000
• Handicrafts – KHR 20,000
• Computer software – KHR 60,000
• Phonograph and sound recordings – KHR 30,000
• Digital works (websites) – KHR 60,000

The approximate cost in euro is thus EUR 4-12 depending on the type of work the author/creator wishes to register.

Border control measures are only available to trade mark and copyright owners and are regulated by the Law on Marks, Trade Name and Acts of Unfair Competition. The law does not provide a procedure for suspension of customs clearance for goods that infringe patents, utility model certificates or industrial design certificates.

Any counterfeit goods may be registered. Counterfeit goods may include any goods/packaging that bear, without authorisation, a trade mark which is identical to a registered trade mark, or goods/packaging which cannot be distinguished from a registered trade mark. However, it should be noted that border control measures are only available in clear-cut cases of infringement.
The customs authority will suspend clearance of the goods for a defined period and this period may not be extended for more than 10 working days. Moreover, if the applicant wishes to destroy the counterfeit goods, civil court proceedings must be initiated within 10 working days of suspension of the goods because the customs authorities may only destroy counterfeit goods with a court’s approval. The customs authority will release the goods if the applicant does not initiate court proceedings.
An application for suspension of customs clearance should be submitted to the customs authority and must contain:
1. A statement showing prima facie evidence (evidence which supports the claim) of counterfeit;
2. A description of the goods;
3. Proof of trade mark registration;
4. The applicant’s information.
Applications and supporting documents may be in Khmer or English (documents in other languages are accepted if translated into Khmer or English).
Official costs are not available as there is no set official cost. The authorities, however, may on a case by case basis require the applicant to pay a security deposit or provide other assurance for the suspension. The customs authorities must notify the applicant within 10 working days from the submission of the request if the application has been granted, rejected or reserved for further consideration.

The application for registration of an industrial design must contain the following:
1. A formal request and application form containing the name, address, nationality and residence of the applicant.
2. If the applicant is not the creator, the request must be accompanied by a statement justifying the applicant’s right to the registration of the industrial design.
3. Drawings, photographs or other adequate graphic representations which embody the industrial design.
4. A statement indicating the kinds of products for which the industrial design is to be used.
5. If the design is two-dimensional, the application should be accompanied by a sample which embodies the industrial design.
6. A Power of Attorney certified by notary public in case of foreign applicant.
7. Foreign filing information of the industrial design application, if filed internationally and upon request by MME.

The cost of filing an industrial design registration in Cambodia is KHR 240,000 which is approximately EUR 40.

If your IP assets are being infringed in Cambodia, there are three main avenues of enforcement which you can consider: civil litigation, criminal prosecution, and customs seizures. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option.
Civil Litigation
A copyright owner whose rights have been violated may file a petition to the court requiring that the defendant stops the infringement and pays compensation to the copyright owner in the form of damages. The copyright owner may in the petition, also seek the return of the disputed equipment or materials, as well as the return of any benefits that were gained from the infringement. The court may also order confiscation or destruction of equipment or materials being produced or used and it has the authority to seize all necessary evidence, such as illegal copies. However, the copyright owner is responsible for any injury caused to the defendant if his/her petition is proved to be unfounded by the court.
Trade mark owners and owners of patents, utility model certificates, and registered industrial designs may sue for monetary damages and/or specific relief in Cambodian civil court. It should be noted that only trade mark owners or licensees (under certain conditions) may seek civil remedies for trade mark infringement where such remedies include the power to grant injunctions, awards and monetary damages etc. The court also has the power to order preliminary injunctions or temporary restraining orders to prevent infringement or imminent infringement, or to preserve evidence.
Criminal Prosecution
A copyright owner may also seek criminal prosecution of the infringers. Copyright infringement is punishable by imprisonment or fines or both, with a double penalty for repeat offenders. The punishment depends on the type of infringement: Infringement of production or reproduction is punishable by six to twelve months imprisonment and/or by a fine of between approximately EUR 930 to EUR 4,650. In the case of importation or exportation of infringing copies, the defendant may be punished by between six to twelve months of imprisonment and/or by a fine of between approximately EUR 370 to EUR 1,860. The punishment for performance or communication to the public is one to three months of imprisonment and/or a fine of approximately EUR 190 to EUR 930. As with cases of civil infringement of copyright, the court may order confiscation and/or destruction of infringing copies and the revenue gained through the act of infringement.
Customs Seizures
Border control measures are only available to trade mark and copyright owners and are regulated by the Law on Marks, Trade Name and Acts of Unfair Competition. The law does not provide a procedure for suspension of customs clearance for goods that infringe patents, utility model certificates or industrial design certificates. Customs has no authority to order damages in cases of infringement. However, in order to prevent abuse of the system, customs does have the authority to order payment of compensatory damages to the importer in case of wrongful application. A request to suspend customs clearance and destroy counterfeit goods may also be filed with the civil court. The customs authority will suspend clearance of the goods for a defined period and this period may not be extended for more than 10 working days. Moreover, if the applicant wishes to destroy the counterfeit goods, civil court proceedings must be initiated within 10 working days of suspension of the goods because the customs authorities may only destroy counterfeit goods with a court’s approval. The customs authority will release the goods if the applicant does not initiate court proceedings.

Patents and utility model certificates are granted by, and should therefore be registered with, the Department of Industrial Property of the Ministry of Industry, Mines, and Energy (MME).
Ministry of Industry, Mines, and Energy
Address: #45 Norodom Blvd., Phnom Penh
Phone: (855)23 723077 / 724477
Fax: (855)23 428263
E-Mail: [email protected]

A patent or utility model certificate application must contain the following:
1. A formal request and application form containing the name, address, nationality and residence of each applicant.
2. If the applicant is the inventor, the application dossier must also contain a Statement of the Applicant’s Right. If the applicant is not the inventor, the application must clearly state each inventor’s name and address, and be accompanied by a statement justifying the applicant’s right to the patent.
3. A description of the invention.
4. One or more clearly stated claims defining the matter for which protection is sought.
5. Drawings, if necessary to understand the invention.
6. An abstract outlining the technical information (the abstract does not affect the scope of protection).
7. Power of Attorney certified by notary public in the case of foreign applicants.
8. Foreign filing information of the patent application or utility model certificate application, if filed internationally, and upon request by MME.

At any time before the granting or refusal of a patent or utility model certificate, the applicant may convert his/her application into an application for a utility model certificate (if the original application was a patent application) or a patent application (if the original application was an application for a utility model certificate). An application may be converted only once.

The application for trade mark registration should be submitted to the Ministry of Commerce’s Department of Intellectual Property (DIP):
Ministry of Commerce Department of Intellectual Property
Address: #20 A-B, Norodom Blvd., Phnom Penh
Phone: (855)23 427358 / 725585
Fax: (855)23 426396
E-Mail: [email protected]
Applications and supporting documents may be in Khmer or English (documents in other languages are accepted if a Khmer or English translation is provided).
The application must contain the following information/documents:
1. A standard application form (provided by DIP).
2. 15 trade mark specimens.
3. A translation/transliteration of non-English marks.
4. A list stating the goods or services the trade mark will be used for.
5. An applicant who has already registered a trade mark in another Paris Convention member state will have priority in registering the trade mark in Cambodia. If a priority date is claimed, the application must include this application number, the priority date, and the country of registration. An original certified copy of the priority application and the English translation may also be needed.
6. A notarised Power of Attorney if the application is filed by an agent.
Even though not a signatory, Cambodia follows the Nice Agreement for classification of goods and services. It should be noted that an applicant may only apply for one mark in one class of goods/services per application. Thus, if the applicant wishes the trade mark to be registered in more than one class, separate applications must be filed for each class. Figure marks are classified in accordance with the Vienna Classification system.
It usually takes about six months from the filing date to obtain a Certificate of Trade Mark Registration (provided that the application is correct) and when the Certificate of Trade Mark registration has been issued, the trade mark owner is then obliged to use the trade mark in Cambodia. Six years from this issuance, and from each term of renewal, the trade mark owner must also submit an Affidavit of Use or Non-Use, and pay an official fee. If the affidavit is not submitted, the trade mark registration may be cancelled upon a third party’s request.
The filing fee for trade mark registrations (including priority claim and publication) in Cambodia (per trade mark class) is approximately EUR 95 per 10-year term.

Cambodia has not yet adopted a specific law on trade secrets. However, a draft law is currently being negotiated. Until Cambodia has adopted the Law on Trade Secrets and Undisclosed Information, trade secrets may be protected under other laws. For example, to maintain information in employment or other contractual relationships, a non-disclosure agreement may be used and enforced pursuant to the Contract Law of 1998.

Indonesia is party to the Berne Convention on the Protection of Literary and Artistic Works. This means that the works you already own are automatically protected in Indonesia, provided that you are a national of one of the other Bern Convention member countries, or if the work was first published in a country party to the Berne Convention.

Even though copyright is in theory not required to be registered in Indonesia in order to be protected, it is strongly recommended that you register it as a proof of ownership. In practice, in case of litigation, the enforcement authorities still need to be satisfied that the IP right holder making the prosecution is in fact the rightful owner, and they usually require the registration as a proof of ownership. Foreign copyright registration may suffice. However, the Indonesian registration gives full evidential certainty in case of litigation.

Only the copyright owner, i.e. the author of the work or a person who has received copyright from the author, can register. The application must be filed in the Indonesian language to the Directorate General of Intellectual Property Rights and the fee is approximately EUR 20 to EUR 30 (depending on the nature of the work and the rate of the local currency).
The following documents are required for registration of copyrights in Indonesia:

• A simple declaration of ownership;
• A sample of the work;
• A deed of assignment of copyright (in case the right has been transferred to the applicant);
• A power of attorney appointing a local firm (in case the application is filed by an agent).

It usually takes about 12 months for the registration certificate to be issued.

In accordance with Indonesian law and contrary to most European legislations, the copyright for works created by an employee, even in the course of employment, do not automatically belong to the employer. The ownership regime of the works created in the course of employment shall be, thus, expressly regulated within the employment contract you conclude with your employees.

Customs Law in Indonesia gives officials the power to suspend a consignment if they have reason to believe that it contains counterfeit goods. However, in practice they rarely make such seizures. A common reason given for this is the lack of procedure or avenue to contact the rights owners even if they do come across a large amount of suspected counterfeits. Furthermore, the rights owners can apply to a court to suspend the customs clearance of a specific shipment of goods. Nevertheless, in practice, these provisions are usually unworkable since it necessitates that you are informed of a suspected shipment, as well as able to provide supporting documentary evidence, before obtaining an order from the court to issue an official instruction to suspend the shipment. Thus, generally speaking, the courts are still not equipped to respond to time critical cases such as dealing with goods in transit.

Industrial design is a creation whose shape, configuration, composition of line(s) or colour(s), or the combination thereof in two or three dimensional forms, and gives an aesthetic impression whereby it can be realized in a two or three dimensional pattern and used to produce a product, goods or an industrial commodity or handy craft.
In order to be protectable a design should be novel. The design will be deemed to be novel if on the filing date or priority date, there is no such design with any previous disclosure published anywhere.

A design will be regarded as lacking novelty and will therefore not be protectable if there is an identical design published or available in the market anywhere prior the filing or priority date.
Furthermore, the right to industrial design shall not be granted if an industrial design is contrary to the prevailing laws and regulations, public order, religion, or morality of the country.
Indonesian law provides protection for the visual appearance of a product, or goods, or industrial commodities only. There will be, thus, no protection for a design without real applications to industrial products or goods.
Moreover, there is no design protection for articles that are “primarily literary or artistic in character” even if they would otherwise come within the definition of design.
Finally, it is not possible for an applicant to apply for a design registration if the visual features of the design serve exclusively as a functional purpose.

Industrial design registrations last for 10 years.

In Indonesia there are two main IP enforcement routes: civil and criminal enforcement.
In the case of criminal enforcement, trade mark, patent and design infringements are complaint-based crimes. A formal complaint with the police must be filed before action can be taken. Copyright infringement is currently a non-complaint-based crime, although according to the new proposed amendments to the Copyright Law it will soon fall under the category of a complaint-based crime. Currently, the police may take copyright actions without a formal complaint from the rights holder. Criminal raids may cost between EUR 8,000 to EUR 19,000. Because of the high costs, raids should not be considered as routine for any IP owner, but should be reserved for targets which would generate maximum publicity if raided. Indonesia’s IP laws have provisions for substantial maximum fines and prison sentences.
Civil litigation is likely to be more expensive than carrying out a criminal raid. IP rights owners usually rely on criminal raids to stop infringement, and then negotiate for civil statements in return for not proceeding further with the case. Good evidence preparation is essential if you decide to go down the route of civil litigation. This may involve surveys, investigator reports or testimonies, video or tape recording. Foreign evidence will need to be legalised.
Given the relatively weak nature of the enforcement system, in many cases private mediation via legal professionals could be the most effective solution. Another reasonable option would be to send warning letters to the infringers. These methods should be considered as viable alternatives particularly for SMEs with limited budgets.

No. Inventions can also be protected by simple patents and by trade secrets if you do not disclose any information on them, i.e. keep them a secret.
Simple patents apply only for products and tools, and not for technologies. These products or tools should be novel and applicable in the industry in question. Also, there are no requirements for an inventive step with a simple patent. The process for obtaining a simple patent is generally shorter than in case of standard patents. There is however a reduced term of protection (10 years from the filing date).
In order to secure trade secret protection the invention must comply with three general standards: the information is not generally known to the public (confidential), it has an economic value (because it is kept secret), and is the subject of reasonable efforts by the rightful holder of the information to maintain its secrecy (through confidentiality agreements where applicable). There is no need to apply a registration in order to get a trade secret protection because the regulation itself already confers the protection if the information fulfills the aforementioned conditions.
Thinking about market strategy, publishing an invention may also be an option for protection and in cases where you do not need to have exclusivity. It is the cheapest option and it has the advantage of blocking others from getting a patent on the same invention. However, take into account that you will be disclosing your innovation to possible competitors.

Patent applications in Indonesia should be submitted to the Directorate General of Intellectual Property Rights. The following documents are required for obtaining a filing date:

• Patent specification in English including description and also including drawings;
• Application form;
• Declaration of ownership;
• Assignment of ownership (in case the right has been transferred to the applicant);
• Power of attorney (in case the application is filed by an agent).

Once a publication has been filed and all formalities met, it will be published in the Official Gazette. Publication takes place 18 months or more after the filing date, or the priority date if the same filing has been made within the last 12 months in any other country also belonging to the Paris Convention. Any party may file an opposition within six months of the date of publication. Patents are carefully examined upon request following the aforementioned six month publication period. These requests have to be made by the applicant within 36 months of the date of filing. Obtaining of protection takes about three to five years from filing.

Legal protection in the form of simple patent can be obtained for a tool or product that is novel, has value and practical utility in industry due to its shape, configuration, construction or components.

No. In Indonesia three-dimensional signs are still not recognized as trade marks. You may, however, try to register your bottle under the Industrial Design Law if the protection is required.

Bad-faith registrations exist where a third party which is not the legitimate owner of the trade mark registers the mark first in Indonesia, thereby preventing the legitimate owner from registering it. Trade mark piracy due to bad-faith registration is a serious problem in Indonesia. Many bad-faith registrations are filed even by the authorized distributors contracted by the trade mark owner. Thus, you should consider registering your most strategic trade marks in Indonesia even before commencing business there.

Once registered, a trade mark is protected in Indonesia for 10 years from the date of filing. The registration can be renewed for subsequent periods of 10 years without limit. Applications for renewal can be filed up to 12 months before expiry of the then current registration period, but not after this period.

A trade secret is information in the field of technology or business that is not generally known to the public (confidential), that has an economic value (because it is kept secret), and that is the subject of reasonable efforts by the rightful holder of the information to maintain its secrecy.

The scope of protection on trade secrets includes methods of production, technologies, inventions, processing methods, sales methods, supplier lists, know-how, data, formulae, or other such information.
What constitutes “reasonable efforts” undertaken by the rightful holder of the information to maintain secrecy?
Such necessary measures usually refer to standard procedures that a company adapts in order to maintain the confidentiality of its valuable information. This might include the insertion of non-disclosure clauses in employment contracts, the conclusion of confidentiality agreements with subcontractors or business partners, password protection for electronic data, restricted access to certain offices or buildings or visitors registration systems, etc.

There is no time limit to trade secret protection – as long as the information is kept secret, remains valuable and necessary measures are taken to guard its secrecy, it will be subject to legal protection.

In a trade secrets case it is necessary to prove that the trade secret has been taken by the suspected party. Proving this might be quite difficult as litigation proceedings in Indonesia are not equipped with a discovery procedure to uncover relevant evidence on the suspected party. It may help your case if you can prove that the local subcontractor used to have a relationship with the victim company or was previously given access to the trade secret (under the confidentiality agreement).
Companies should also proceed with caution when engaging investigators since the law in Indonesia accords certain privacy rights, and the infringers themselves could actually complain in a criminal case that their own privacy rights were infringed upon.

A draft copyright law was introduced in 2005, but it has not yet been enacted. However, the IP Law of 2011 contains a section on copyright, which clarifies that copyright in Laos is an automatic protection which arises immediately when the work is created without registration requirements. However, a notification of rights can be voluntarily recorded with the Ministry of Science and Technology (“MOST”).
The IP Law grants a copyright owner the exclusive right to exploit his or her work, including the moral and economic rights to the work.
The moral rights include the exclusive right for the copyright owner to disclose and first publish the work; to have his or her name attached to the work; and prevent misattribution, distortion, mutilation or other modification of the work, and any action that would be prejudicial to the copyright owner’s honour or integrity.
The economic rights include, in sum, the exclusive right for the copyright owner to exploit his or her work through the making of collections, reproduction, distribution, translation, broadcasting, and communication of the work to the public by wire or wireless means. The IP Law further provides a long list of exclusive rights granted to the copyright owner, which vary depending on the type of work. For example, the copyright owner to a literary work is, in addition to the above-mentioned rights, granted the exclusive right to recite the work to the public, translate the recitation and communicate the recitation to the public. An owner of a copyrighted dramatic or musical work is granted the exclusive right to perform the work to the public, translate the work, and communicate the performance of the work to the public.

While there is no system to formally register copyright in Laos and protection arises automatically, copyright owners can obtain a ‘Certificate of Information’ which legally documents the existence of the copyright and its owner. This is recommended for copyright owners because the certificate can be used as evidence in enforcement proceedings.
The application may be filed in Lao or English and must contain the following:
1. A formal request to inform of copyrights.
2. A picture or sample of the work, and/or title of the work, and the date of its creation.
3. A copy of an ID card, company registration documents, authorization documents and other relevant identification documents.
Provided that correct documentation and receipt of payment is submitted, MOST will issue a receipt or a ‘Certificate of Information’ that it has entered the notification into the records, which will serve as evidence in future administrative or judicial proceedings and can therefore prove extremely useful.
The address is as follows:
Ministry of Science and Technology (MOST)
P. O. Box 2279
Nahaidiou Rd
LA – Vientiane
Tel: +85 621 213470-148, 217706
Fax: +85 6213472
The IP Law does not state the fees that apply with respect to information/registration of IPRs in Laos. According to the Regulation on Notification of Copyright Information of 2007, however, the fees for copyright information are as follows: Application fee is LAK 5,000 (approximately EUR 0.5); notification of copyright information is LAK 20,000 (approximately EUR 2); and the fee for search of information is LAK 10,000 (approximately EUR 1). Thus, the total approximate fee is EUR 3.50. It should be noted, however, that these fees are subject to change by decrees/regulations following promulgation of the new IP Law.

Currently Laos has no formal customs recordal system. However, if the IPR owner knows of a shipment containing counterfeit goods, he or she may inform customs and file a motion by submitting an application form provided by customs and pay a bond or deposit. The IP Law and Instructions on Customs Measures for the Protection on Intellectual Property Rights No. 1970/MOF (“Customs Measures Instructions”) regulates such “customs information” measures in Laos. The IP Law allows IPR owners and/or customs to initiate actions for the suspension of customs clearance of suspicious counterfeit goods. The tariff officer and other competent officers at the Lao borders have the right and duty of inspecting the imported goods, and seizing and confiscating infringing goods. So far, most counterfeit goods in Laos have involved food and drugs.
Customs; Laos
What are the procedures for initiation actions for suspension of customs clearance?
Any trade mark and copyright holder may inform Customs of counterfeit or pirated goods. The IPR holder must provide the following documents prior to inspection and suspension (the application and all the supporting documents must be made in Laos):
1. A motion for inspection and suspension using the standard form issued by the Customs Department.
2. Evidence of relevant IPRs and adequate evidence of prima facie infringement of such rights (i.e. “at first sight” evidence that is sufficient to reasonably presume that infringement has occurred) in compliance with the IP Law.
3. The names of the relevant checkpoint(s) or place(s) where goods will be imported or exported.
4. A detailed description of the goods sufficient enough to make them readily recognizable by the customs officer.
5. Any other information (if any) such as photos of infringing goods or details of importer or exporter as information for customs officers.
6. A security deposit of LAK 10,000,000 equivalent to approximately EUR 1,000 deposited in cash, by check or by a bank guarantee.
7. An execution of a guarantee for covering any expenses of customs authorities which may arise from the requested suspension.
8. A receipt of payment of the security deposit.
In case of an emergency where the filing of a written application is impossible, the right holder may verbally request the customs authority to take action.
Customs Department Ministry of Finance
Lane Xang Avenue
Vientiane
Tel: +85 6 21 217452
Fax: +85 6 21 217451

Customs may maintain the suspension for 10 working days. However, suspension may only continue if the applicant has provided evidence that judicial action has been initiated. The applicant must initiate judicial action with the Court against the owner of the allegedly infringing goods within 10 working days upon receipt of the notice of suspension. Failure to initiate judicial action within the statutory time entitles the customs officer to release the goods immediately and to enforce the applicant to compensate for damages suffered by the owner of the goods.

Industrial design certificates protect products’ special appearance, i.e., the combination of applied art and applied science of products. In order to obtain an industrial design certificate, the design must meet the following requirements: it must be new in the sense that it has not been disclosed to the public by publication, display or some other means in Laos or internationally prior to the filing date; or priority date (if priority is claimed); and must be ornamental. An industrial design is considered ornamental if “it gives a special appearance to the object to which the design is applied or in which it is embodied” (Article 15.2 of the IP Law).

Any person, legal entity or organisation may apply for an industrial design certificate. A person, legal entity or organisation residing in a foreign country, however, must be represented by an authorized representative in Laos (i.e., an IP agent). Industrial designs are registered with the Ministry of Science of Technology (MOST):
Ministry of Science and Technology (MOST)
P. O. Box 2279
Nahaidiou Rd
LA – Vientiane
Tel: +85 621 213470-148, 217706
Fax: +85 6213472
The application may be filed in either English or Lao. However, application documents made in English must be translated into Lao within 90 days from the application filing date. The translation must be certified to be a correct translation.
The application for industrial designs must contain the following:
1. A request for registration of the industrial design.
2. Name and other personal data of the applicant/inventor.
3. A Power of Attorney if the application is filed through an agency, including that agent’s name and address in Laos.
4. Drawings or photographs of the industrial design.
5. A statement of the type of goods to which the industrial design relates.
6. Receipt of payment of official fees.
An application for an industrial design may also contain a claim for priority. If priority is claimed, the applicant must submit a copy of the application on which the priority claim is based, certified as correct by the authority which received the application and showing the filing date. Such documents do not require any authentication, and may be filed, without fee, at any time within three months of the filing of the application in Laos.
Upon receiving an application for an industrial design, MOST will conduct a formality examination to ensure that the application is complete and meets the formal requirements. If the application is incomplete, MOST will notify the applicant, who will then have 60 days from the date of the notification to complete the application. Applications for industrial designs are not examined as to substance.
After consideration and examination of the registration for an industrial design application, if it is considered to meet the requirements provided by the IP Law, MOST will issue an industrial design certificate.
The IP Law does not state the fees that apply with respect to information/registration of IPRs in Laos. According to the Prime Minister’s Regulation No. 322/STEA-PMO of 2003 on the implementation of Decree on Patent, Petty Patent and Industrial Designs, the official fees for filing an application for industrial designs are as per below. It should be noted, however, that the fees set out below are subject to change by decrees and regulations following promulgation of the new IP Law.
The governmental fee for filing an industrial design registration in Laos is USD 10 (approximately EUR 8) in filing fee; USD 10 (approximately EUR 8) for the formality examination; and USD 20 (approximately EUR 15) for the grant of the industrial design. Thus, the total basic governmental fee is approximately EUR 31. If a request against registration is required, there will be an additional fee of USD 10 (approximately EUR 8). If the application must be amended, the amendment fee is USD 10 (approximately EUR 8). Assignment or licensing of rights of industrial designs costs USD 40 (approximately EUR 30) and duplication of industrial designs costs USD 10 (approximately EUR 8).
In order to maintain the industrial design, an annual official fee must be paid by the owner of the design from the second year and onwards until the industrial design certificate expires, as follows:
2nd year USD 15 (approximately EUR 11)
3rd year USD 23 (approximately EUR 17)
4th year USD 31 (approximately EUR 23)
5th year USD36 (approximately EUR 27)
6th - 15th year USD 50 (approximately EUR 37)
7th year USD 105 (approximately EUR 78).

In the case of your IP assets being infringed in Laos, there are four main avenues of enforcement which can be considered: dispute resolution, civil litigation, criminal prosecution and customs seizures. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option.
Forms of Dispute Resolution
The IP Law offers the following settlement measures to resolve intellectual property disputes:
1. Reconciliation (an agreement resulting from reconciliation shall adhere to contracting principles as provided for in the Law on Contract and Tort).
2. Mediation between the IPR owner and the infringer.
3. Administrative settlement.
4. Settlement through the Economic Dispute Resolution Committee.
5. Bringing the case to the People’s Court for judgement.
6. International dispute settlement.
In the case of an intellectual property dispute, the parties may choose any form of dispute resolution set out in points 1-6 above.
Civil Enforcement
IPR owners may turn to the People’s Court at the district or provincial level to enforce their rights by means of civil litigation. Available remedies include:
• A court order to the effect that the infringer ceases with the infringing acts.
• A suspension of customs clearance goods.
• A judgment of infringement.
• Damages – compensation for infringement and legal fees.
• The destruction/disposal of infringing goods.
• The disposal of tools, etc., used to create/commit the infringement.
The District/Provincial Court’s decision may be appealed to the Appeal Courts and the Supreme People’s Court. Overseas court orders must be recognised and approved by the Laos courts to be effective and executable in Laos.
In addition, IPR owners may request the People’s Court to order prompt and effective provision measures (injunction orders) to:
• Prevent an infringement from occurring.
• Prevent the entry into the channels of commerce of goods, including imported goods immediately after customs clearance.
• Preserve evidence in regard to the alleged infringement.
Moreover, an IPR owner may apply for ex parte (by one party - legal proceeding brought by one person in the absence of and without representation or notification of other parties) provisional measures with the People’s Court where any delay is likely to cause irreparable harm to the IPR owner or where there is a demonstrable risk of evidence being destroyed.
Criminal Prosecution
Criminal prosecution may be initiated through the Lao police force (economic division), who refer the case to a public prosecutor for criminal court action. The competent court is the People’s Courts at the provincial level (and the Appeal Court and the Supreme People’s Court for appeals).
Criminal actions are available for the protection of copyright, patents, industrial designs, geographical indications trade secrets and trade marks.
Possible penalties include damages, imprisonment for a period of three months up to two years, and fines of between LAK 500,000 and LAK 10,000,000, equivalent to approximately EUR 50 and EUR 1,000.
The infringer may also be subject to additional measures, including suspension, withdrawal of business licenses and seizure of infringing goods and equipment used to commit the infringement.

Customs seizures
Currently Laos has no formal customs recordation system. However, if the IPR owner knows of a shipment containing counterfeit goods, he or she may inform customs and file a motion by submitting an application form provided by customs and pay a bond or deposit. Counterfeit trade mark goods and pirated copyright goods may be informed to the Customs Department. The IP Law and Instructions on Customs Measures for the Protection on Intellectual Property Rights No. 1970/MOF (“Customs Measures Instructions”) regulates such “customs information” measures in Laos. The IP Law allows IPR owners and/or customs to initiate actions for suspension of customs clearance of suspicious counterfeit goods. The tariff officer and other competent officers at the Lao borders have the rights and duty of inspecting the imported goods, and seizing and confiscating infringing goods. Customs may maintain the suspension for 10 working days. However, suspension may continue if the applicant has provided the evidence that judicial action has been initiated.

The IP Law excludes certain types of inventions from patent protection, including:
• Discoveries, scientific theories and mathematical methods.
• Schemes, rules or methods for doing business, performing mental acts or playing games.
• Methods for the treatment of the human or animal body.
• Inventions contrary to the public order or the national cultural morality.

Petty patents are the official certificates issued to protect utility innovations. The IP Law defines utility innovations as “new innovative work[s] derived through technical improvements, which involve simpler [inventive] steps than with inventions” (Article 3.7 of the IP Law). In order to receive a petty patent, the utility innovation must be new in the sense that it has not been previously known or used in Laos within one year prior to the date of the application, or the priority date (if priority is claimed). The requirement as to the inventive step means that the utility innovation must involve a new technical improvement, but the level of the inventive step may be simpler than for patents. Finally, the innovative work must be industrially applicable.

Patents and petty patents are registered with MOST:
Ministry of Science and Technology (MOST)
P. O. Box 2279
Nahaidiou Rd
LA – Vientiane
Tel: +85 621 213470-148, 217706
Fax: +85 6213472
Any person, legal entity or organisation may apply for a patent or petty patent certificate. A person, legal entity or organisation residing in a foreign country, however, must be represented by an authorized representative in Laos (i.e., an IP agent).
The application may be filed in either English or Lao. However, application documents made in English must be translated into Lao within 90 days from the application filing date. The translation must be certified to be a correct translation.
The application for patents and petty patents must contain the following:
1. A request for a patent or petty patent.
2. Name and other personal data of the applicant/inventor and the title of the invention.
3. A Power of Attorney if the application is filed thorough an agency, including that agent’s name and address in Laos.
4. A description of the patent or petty patent.
5. One or more clearly defined claims.
6. Drawings if required to understand the invention.
7. An abstract outlining technical information.
8. Receipt of payment of official fees.

An application for a patent or petty patent may also contain a claim for priority. If priority is claimed, the applicant must submit a copy of the application on which the priority claim is based, certified as correct by the authority which received the application and showing the filing date. Such documents do not require any authentication, and may be filed, without fee, at any time within 3 months of the filing of the application in Laos.
Upon receiving an application for a patent or petty patent, MOST will conduct a formality examination to ensure that the application is complete and meets the formal requirements. If the application is incomplete, MOST will notify the applicant, who will then have 60 days from the date of the notification to complete the application.
After the formality examination, MOST will conduct a substantive examination of the application to determine whether it meets the requirements for patentability or for obtaining a patent or petty patent. Applications for industrial designs are not examined as to substance. The substantive examination for patents and petty patents is based on a search of existing technical knowledge. In case the application has previously been subject to a search or examination by another authority (in another country) the applicant may submit a copy of that report and request that it be accepted in lieu of conducting a search in Laos. If there are no previous examination reports (or the applicant is otherwise unable to provide such report), the applicant must request MOST to examine the application as to substance. It should be noted that MOST is required by law to undertake such examination within 32 months for an invention (patent) and 12 months for a utility innovation (petty patent) from the filing date of the application or the priority date (if priority is claimed). All MOST’s expenses to examine the invention or utility innovation are charged to the applicant.
After consideration and examination of the registration for a patent or petty patent application, if it is considered to meet the requirements provided by the IP Law, MOST will issue a patent or petty patent certificate.

The IP Law does not state the fees that apply with respect to information/registration of IPRs in Laos. According to the Prime Minister’s Regulation No. 322/STEA-PMO of 2003 on the implementation of Decree on Patent, Petty Patent and Industrial Designs, the official fees for filing an application for patents and petty patents are as per below. It should be noted, however, that the fees set out below are subject to change by decrees and regulations following promulgation of the new IP Law.
The governmental fee for filing a patent registration in Laos is USD 20 (approximately EUR 15) for the filing fee; USD 10 (approximately EUR 8) for the formality examination; and USD 30 (approximately EUR 22) for the granting of the patent. Thus, total basic governmental fee is approximately EUR 45. If a request for opposition is required, there will be an additional fee of USD 20 (approximately EUR 15).
If the application must be amended, the amendment fee is USD 10 (approximately EUR 8). Assignment or licensing of patent rights cost USD 10 (approximately EUR 8) and duplication of a patent costs USD 10 (approximately EUR 8).
In order to maintain the patent, an official annual fee must be paid by the owner of the invention from the 5th year and onwards until the patent expires, as follows:
5th year USD 50 (approximately EUR 37)
6th year USD 60 (approximately EUR 45)
7th year USD 70 (approximately EUR 52)
8th year USD 100 (approximately EUR 75)
9th year USD 140 (approximately EUR 105)
10th year USD 180 (approximately EUR 134)
11th year USD 240 (approximately EUR 179)
12th year USD 300 (approximately EUR 225)
13th year USD 380 (approximately EUR 284)
14th year USD 460 (approximately EUR 344)
15th year USD 651 (approximately EUR 486)
16th year USD 551 (approximately EUR 412)
17th year USD 750 (approximately EUR 560)
18th year USD 860 (approximately EUR 643)
19th year USD 970 (approximately EUR 725)
20th year USD 1,100 (approximately EUR 822)
The governmental fee for filing a petty patent registration in Laos is USD 10 (approximately EUR 8) for the filing fee; USD 10 (approximately EUR 8) for the formality examination; and USD 30 (approximately EUR 22) for grant of the patent. Thus, total basic governmental fee is approximately EUR 38. If a request for opposition is required, there will be an additional fee of USD 10 (approximately EUR 8). If the application must be amended, the amendment fee is USD 10 (approximately EUR 8). Assignment or licensing of petty patent rights cost USD 40 (approximately EUR 30) and duplication of a petty patent cost USD 10 (approximately EUR 8).
In order to maintain the petty patent, an annual official fee must be paid by the owner of the utility innovation from the 2nd year and onwards until the petty patent expires, as follows:
2nd year USD 25 (approximately EUR 19)
3rd year USD 35 (approximately EUR 26)
4th year USD 50 (approximately EUR 37)
5th year USD 65 (approximately EUR 49)
6th year USD 80 (approximately EUR 60)
7th year USD 105 (approximately EUR 78).

If the patent application has previously been subject to a search or examination by another authority (in another country), a copy of such search or examination may be submitted by the applicant and requested to be accepted in lieu of conducting a search in Lao. If no such previous search/examination has been conducted (or is submitted), the Lao authorities will undertake the examination within 32 months for inventions (patent application) from the filing date or priority date./p>

Trade mark protection may be granted for any sign or combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. That is, the sign or combination of signs must have a distinctive character. Signs eligible for protection include:
• Words, including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs.
• Signs not identical to a previously registered mark for the same goods or services.
• Signs not similar to a previously registered mark for the same, similar, or related goods and services, where the use of the later mark would cause confusion as to the source of the goods or services or create a false impression that they are connected or associated with another party.
• Signs not having any of the prohibited characteristics under the IP Law (prohibited characteristics include, inter alia, non-distinctive marks, imitative or counterfeit marks, marks confusingly similar to already registered marks, marks contrary to the national security, social order, rules, laws, culture and tradition).

Any person, legal entity or organisation may apply for a trade mark certificate. A person, legal entity or organisation residing in a foreign country, however, must be represented by an authorized representative in Laos (i.e. an IP agent). Trade mark applications may be made in English or Lao and submitted to:
Ministry of Science and Technology (MOST)
P. O. Box 2279
Nahaidiou Rd
LA – Vientiane
Tel: +85 621 213470-148, 217706
Fax: +85 6213472

The application must contain the following information/documents:
1. A request for registration of the trade mark.
2. Name and other personal data of the applicant.
3. A Power of Attorney if the application is filed through an agency, including that agent’s name and address in Laos.
4. Drawings or specimen of the mark.
5. Description of the goods/services to which the mark will be applied/used in connection with.
6. Receipt of payment of official fees.
Although not a signatory, Laos applies the Nice Agreement for classification of goods and services. One registration application is valid for only one trade mark but may apply to more than one class of goods/services.
MOST conducts a formal examination of the trade mark application but does not examine it as to substance. Trade mark applicants do not have to show prior use of the trade mark. However, once registered, the trade mark must be used in Laos for the registration to be maintained. The minimum period of non-use is 5 years. The detailed requirements for trade mark registrations will likely be set out by a guiding decree on trade marks issued by the Prime Minister following promulgation of the new IP Law.

In order to be considered a trade secret, information must meet the following requirements:
1. The information must be a secret; not known among or readily accessible to persons that normally deal with the kind of information in question.
2. The information must have commercial value.
3. The proprietor of the information must have taken reasonable steps to keep the information secret.

Information ineligible for protection as trade secret includes personal secrets, secrets of the state and state administration and other non-business-related secret information.

Article 60 of the IP Law grants the proprietor of a trade secret the following rights:
1. To prevent the trade secret from being disclosed to, acquired by, or used by others without the proprietor’s consent, in a manner that is contrary to honest commercial practices, except:
• Discovery of the information by reverse engineering, laboratory testing, analysis or other similar means; or
• Acquiring the information without an obligation of confidentiality or trust.
2. To protect the trade secret against infringement by initiating court action and claiming damages to compensate for the infringement.
3. To prevent the trade secret from being misappropriated.
4. To disclose, withdraw or utilize, or transfer the trade secret to other persons.
5. To control any person who is in lawful control of the trade secret from employment or a contract or other agreement.
Such obligation of confidentiality shall remain in effect so long as the information remains secret, even where employment, contract or other agreement terminates sooner.

While you cannot directly apply to the Royal Malaysian Customs to detain or seize goods, if you suspect that counterfeits of your products are going to be imported into Malaysia you can apply to the Registrar of Trade Marks to invoke a seizure. You must provide certificates proving that you are the owner of the trade mark that the expected counterfeits infringe, and provide information relating to the goods and the shipment to enable the customs officers to identify the imported goods and detain them.
Further to this application, you would then have to file a civil suit to obtain an order that the goods are not to be released. It should also be noted that where the goods have been seized and you fail to commence civil action within the retention period, the person that owns the seized goods may apply to the Court for an order of compensation against you. If the Court is satisfied that the person aggrieved had suffered loss or damage as a result of the seizure of the goods, the Court may order you to pay compensation in such amount as the Court thinks fit.

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features such as the shape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. The design features must be applied to an article by any industrial process or means of which the features in the finished article appeal to eye.
In order to be registered, an industrial design must be new at the date an application for its registration is filed. A design is considered new only if it has not been made available or disclosed to the public in any way whatsoever in Malaysia before the filing date of the application and it is not on the record of the Register of Designs.

The designs of certain types of article are specifically excluded from design registration. An industrial design will not be able to be registered if:

• the aesthetic appearance of an articles is not significant or the design features differ only in immaterial details;

• it is a method or principle of construction;
• the designs are contrary to public order or morality;
• the designs of the articles concern exclusively with how an article functions; and
• the designs of articles that are integral parts of other articles and whose features are dependent upon the appearance of other article.

As claims are based on a "first-to-file" basis, the filing of an industrial design should be made at the earliest possible time and before a product is disclosed to the public. Prior disclosure will destroy the novelty of the design.

In the case of your IP assets being infringed upon in Malaysia, there are two main avenues of enforcement which you can consider, namely criminal enforcement, which is a complaint lodged with the Enforcement Division of the Ministry of Domestic Trade, Cooperatives and Consumerism (ED), or civil litigation. In many cases however private mediation via legal professionals is more effective and should be considered as a viable option, particularly for SMEs who may have budget limitations.
Criminal Enforcement by the ED
In Malaysia complaints can be lodged with the Enforcement Division of the Ministry of Domestic Trade, Cooperatives and Consumerism (ED) for cases in relation to counterfeiting or piracy. The ED has the power to seize products and prosecute offenders/counterfeiters. These actions are somewhat speedy and can be cost-effective. In brief, the IP right owner would have to provide the ED with documents to prove their rights, an investigation report to show the infringing activity, and also a letter of complaint. Enforcement by the ED is also recommended because it would provide for immediate confiscation of infringing goods:
• The actions undertaken by the ED can include raid actions against suspected counterfeiters or pirates where goods that are found at the premises are seized. Subsequent to the seizures, the matter will be investigated by the ED for purposes of imposing a fine on the infringer or for the infringer to be prosecuted in court.
• It should be noted that you, as a brand or right owner, play a supporting role to assist the ED to initiate the action against counterfeiters or pirates. This means that you would rely on the authorities to initiate the action and complete the investigation, but you would support the investigation by providing the authorities with evidential support such as identification of the seized goods and also attendance as a witness in court, if necessary.
Civil Litigation
In cases of trade mark or copyright infringement, rights owners would also have recourse to file a civil suit in the High Court. An action can be filed against the infringers where a typical result could be an injunction (i.e. a court order obliging the infringer to immediately stop their infringing activities) and damages to be paid to the rights owner. Since 2010, the Chief Justice has directed that civil cases should as far as possible proceed to trial within nine months from the date of filing. This has helped to ensure that the backlog of cases in the courts is minimised.

No matter which enforcement route you take, you will need to prepare and collect evidence to show that you are the owner of the IP right in question in Malaysia (e.g. provide your Malaysian trade mark registration certificate), and show proof that the IP right has been infringed by a third party.

In Malaysia, the following cannot be patented:

1. Discoveries, scientific theories and mathematical methods;
2. Plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;
3. Schemes, rules or methods for doing business, performing purely mental acts or playing games;
4. Methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Individuals or corporate entities can register patents. It is not a requirement that an inventor has to be a Malaysian citizen or a Malaysian corporation. All documents submitted must either be in English or the national language of Malaysia (Bahasa Malaysia). An application for a patent in Malaysia needs to provide the following information:
• The inventor’s details and a statement justifying the applicant’s rights to file the patent (e.g. through employment or assignment) in form 1.
• Specifications of the invention including a description, claims, abstract and drawings (if any). It is usually the case that businesses hire a patent attorney or patent drafter for the purposes of providing this information accurately.
• Within 18 months from the date of filing, the Applicant must request one of the following options:
a. Request for Substantive Examination
b. Request for Modified Substantive Examination, or
c. Request for Deferment of Substantive Examination
If the applicant does not elect any of the above options, the application will lapse with no possibility of reinstatement and the patent will not be granted.
(a) Request for Substantive Examination
‘Substantive Examination’ is a full examination on the substantive requirements of the patent application, i.e., ‘novelty’, ‘inventive step’ and ‘industrial applicability’. To expedite the examination process, it is advisable to provide one of the following documents (if available) to assist the patent examiner during examination of the application:
• Any information relating to patents granted (or applied for) for the same or essentially the same invention claimed by the applicant via: the European Patent Office, United States of America, United Kingdom, Australia, Japan, or the Republic of Korea.
• Search results, bibliographic details or relevant official actions issued by any of the above jurisdictions.
As Substantive Examination is a full examination on all substantive and formality requirements, it generally takes a longer time for the patent to be granted.
(b) Request for Modified Substantive Examination
‘Modified Substantive Examination’ may be requested for if the applicant has already been granted a corresponding patent by the European Patent Office, or in United States of America, United Kingdom, Australia, Japan, or the Republic of Korea. The Modified Substantive Examination is a simplified examination whereby the substantive requirements of novelty, inventive step and industrial applicability are considered to have been met upon by the foreign patent. If your business has already patented an invention in any of the six jurisdictions mentioned, requesting a Modified Substantive Examination can reduce the time taken for a patent to be granted.
In pursuing this option, the applicant must:
• amend the Malaysian patent specification and claims to conform substantially to those granted in the foreign patent.
• provide a certified copy of the foreign patent at the time of filing a request for Modified Substantive Examination.
(c) Request for Deferment of Substantive Examination
The ‘Request for Deferment of Substantive Examination’ would have the effect of deferring the deadline for examination up to five years from the date of filing the application. Therefore, a request for deferment would act as an extension of time to request for examination from the initial 2 year deadline. This is particularly useful in the situation where your business has a foreign patent application that is pending grant, and intends to request a Modified Substantive Examination once the foreign patent is granted.
The agency dealing with patents is the Intellectual Property Corporation of Malaysia, the contact details of which are as follows:
The Patent Registration Office, Intellectual Property Corporation of
Malaysia, Unit 1-7, Ground Floor, Tower B, Menara UOA Bangsar,
No. 5 Jalan Bangsar Utama 1, 59000 Kuala Lumpur, Malaysia
Tel: +603-2299 8400
http://www.myipo.gov.my/

According to Malaysian law a “mark” may be a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof which is visible. Even though not stated explicitly, jurisprudence confirms that shapes and colours per se are considered to be marks as well. A “trade mark” is a mark used by a person for the purpose of distinguishing its goods or services from those of other persons in cause of trade.

In Malaysia, there can be no doubt - neither sounds nor smell can be registered as a trade mark (lack of visibility). Furthermore, a trade mark is prohibited from being registered:

• if it contains or comprises any scandalous or offensive matter;
• if it is prejudicial to the interest or security of the Malaysian nation;
• if it contains words such as Patent, Patented, By Royal Letters Patent; Registered, Registered Design; Copyright or a word or words to the like effect, in any language whatsoever;
• if it contains representations of Malaysian state emblems, the words ASEAN and the representation of the ASEAN logotype or any colourable imitation thereof, the words “Red Crescent” or “Geneva Cross” and representations of the Red Crescent, the Geneva Cross and other crosses in red, or of the Swiss Federal Cross in white or silver on a red ground or such representation in a similar colour or colours;
• if its use is likely to deceive or cause confusion to the public,
• if it is identical with or closely resembles a mark which is well-known in Malaysia for the same goods or services of another proprietor, or
• if it claims a false geographical indication (i.e. the trade mark misleads the public as to the true place of origin of the goods).

An application form (Form TM5 from the Registry of Trade Marks) should be filed with the Registry of Trade Marks. All documents submitted must either be in English or the national language of Malaysia (Bahasa Malaysia). The application must include the word mark or a representation of the trade mark which you are applying for. You also need to indicate which class of goods or services the trade mark will be for, and a list of the goods and services that the trade mark would cover. Any individual or a corporate entity can register a trade mark. If the applicant resides abroad, an address for service in Malaysia must be provided. While foreign applicants are able to register a trade mark, it is common practice for them to engage a trade mark agent for this purpose. You can appoint an agent to file the application on your behalf by completing Form TM1 from the Registry of Trade Marks and making a statutory declaration of the appointment. Once an application has been filed, it will be examined for registration purposes within 1-2 years from the filing date. In the event there is no objection raised by the examiner, a form calling for advertisement of the mark will be issued. Once the mark has been advertised in the Government Gazette and there is no opposition filed, the mark will proceed to registration.
The agency dealing with trade marks is the Intellectual Property Corporation of Malaysia, the contact details of which are as follows:
Registry of Trade Marks, Intellectual Property Corporation of
Malaysia, Unit 1-7, Ground Floor, Tower B, Menara UOA Bangsar,
No. 5 Jalan Bangsar Utama 1, 59000 Kuala Lumpur, Malaysia
Tel: +603-2299 8400
Website: http://www.myipo.gov.my/
The basic filing fee (excluding agent costs) for trade mark registration in Malaysia starts from RM 1,020, which is approximately EUR 252.

Yes. Trade secrets are recognised in Malaysia and qualify for IP protection there. Some examples of confidential information include manufacturing processes, formulas and even information relating to customers, suppliers, cost prices and customers’ requirements. In general, substantial time and efforts are required for information of this nature to be created and qualify for protection in legal cases, as they must satisfy these three criteria:
1. the information must be confidential and not generally known to the public;
2. the recipient of the information must be made aware of their obligation to keep the information confidential (e.g. if a confidentiality agreement was signed);
3. the information was used in an unauthorised way to the detriment of trade secret owner or his/her business.

To help prove that the information in question is confidential, you will need to demonstrate the measures you took to identify and safeguard confidential information (e.g. by signing non-disclosure agreements, marking documents as confidential, or password protecting electronic data, etc.). When enforcing trade secrets in legal cases, it is also better to identify specific information as opposed to generalised information, and where possible, to express this information in a tangible form so you can distinguish it from ordinary information that an employee would acquire through their daily work. Supporting this, it is important to consider how such information is managed within your company – restricting access to information can both prevent trade secrets from being lost in the first place and the measures themselves can be used to demonstrate to courts that steps were taken to keep information confidential.

For dealings with external parties, it is always advisable to require them to sign a non-disclosure agreement (‘NDA’) before any of your confidential information has been divulged. The NDA should expressly impose an obligation of confidence on the receiving party to not misuse your confidential information to the detriment of your company. The duty of confidentiality extends even to third party recipients who know or are reasonably expected to have knowledge of the confidential nature of the information in question.

Copyright for written work, film, music or software may be difficult for foreign companies to enforce in Myanmar under the current Myanmar Copyright Act of 1914. Copyrights from other countries are not recognized and there are no procedures for registering foreign copyrights in Myanmar.

The Sea Customs Act 1878 prohibits export or import by land or sea of goods with a counterfeit trade mark. Under sections 170 and 171, a Customs officer is authorized to stop and search any person, vessel or vehicle on the grounds of reasonable suspicion.

There is no Customs recordal system in Myanmar. Rights owners can, however, notify customs officers to suspend the customs clearance of specific goods suspected of being counterfeit. Furthermore, customs officers have ex-officio power to confiscate suspected counterfeit goods.

Currently, IPR infringement cases are handled through a rather complicated judicial system with no less than five levels: the Township, District, State or Regional Courts and the Supreme Court. It explains why disputes are usually amicably resolved through negotiations or conciliations.
In Myanmar, since there is no system for registration of trade marks or for a statutory title to a trade mark, the rights of the parties setting up rival claims to ownership of a trade mark must be determined in accordance with the principle of common law based on prior use rather than first to file.
Criminal Enforcement
An effective strategy for enforcement of trade marks and protection of trade names is through criminal action under the Myanmar Penal Code, 1860. The benefit of criminal action is that the Merchandise Marks Act’s forfeiture provisions, which also apply to offences under the Penal Code, give significant powers to the court to order the forfeiture of infringing goods, whether or not a conviction is actually secured.
Criminal action under the Penal Code is possible against a person using a false trade mark or a counterfeit trade mark, making or possessing any instrument for counterfeiting a trade mark or selling goods marked with counterfeit trademarks.
The accused person can be exempted if he/she can prove the following:
• The counterfeiting was done in innocence due to a lack of knowledge on how to differentiate between counterfeit and genuine products.
• Information identifying and disclosing to the authorities the main source of the counterfeit goods.
Punishment ranges from a fine to three years imprisonment. Additionally, the court may order the destruction of the seized goods.
Civil Enforcement
Even though property in a name or mark is not vested in the “registered owner” through registration in Myanmar, the country’s general law does provide that no trader has any right to represent its goods as somebody else’s.
Passing Off:
An enforcement action lies where there is a tangible possibility of damages to some business or trading activity. It is not necessary to prove a fraudulent motive or representation. The "injured party" is entitled to nominal damages if no actual damage is proved.

There is presently no law or at least no law in operation on patents. This means that production, commercial use and trade in goods are possible without the permission of the people/companies who may hold the patents rights outside Myanmar.
While there is no patent registration legislation in Myanmar, a practice has developed by which the person purporting to be the patent owner may make a Declaration of Ownership with respect to the description of the invention and register that Declaration with the office of the Registrar of Deeds and Assurances in Yangon or Mandalay under the Registration Act.

There is still no particular statute or law on trade marks or any specific provisions regarding registration of trade marks in Myanmar today. However, the Penal Code defines a trade mark as “A mark used for denoting that goods are the manufactured merchandise of a particular person”. Likewise, the Private Industrial Enterprise Law provides that “a business is not allowed to distribute or sell his goods without trade mark”.

A company may acquire a right of property in a mark in Myanmar by using it on or in connection with the company’s goods or services if it can be shown that the public understands the mark to indicate goods made by a particular manufacturer or sold by a particular company/merchant.
While, there is no trade mark registration legislation in Myanmar, a practice has developed by which the person purporting to be the trade mark owner may make a Declaration of Ownership with respect to that trade mark and register that Declaration with the office of the Registrar of Deeds and Assurances in Yangon or Mandalay under the Registration Act. Once the Declaration is registered, it is customary and advisable to publish a Cautionary Notice in the English language daily newspaper warning people not to infringe that trade mark.

A Declaration in the prescribed form must be completed by the person purporting to be the trade mark owner for each trade mark. A description of the goods or services on or in connection with which the trade mark is used and a copy of the mark must be included in the Declaration. A Power of Attorney must be executed (by the same party who signs the Declaration) appointing local counsel to be the attorney of the trade mark owner for the purposes of registering the Declaration(s) at the Registrar of Deeds and Assurances. The registration must be filed in Burmese language.
The non-compulsory Cautionary Notice (which may include details of more than one mark) should be published in the national English language newspaper such as the New Light of Myanmar.

The registration of a Declaration of Ownership of a trade mark by a person, though a relevant factor for the purpose of determining when he had intended to claim the trade mark as his/hers, will not by itself give him/her a right of property in that trade mark. Thus, as with common law trade marks in other jurisdictions, a Myanmar trade mark needs to have established a reputation or “use” in Myanmar in order to be enforceable. Registration of a Declaration of Ownership and publishing a Cautionary Notice do not give the purported owner of a trade mark the necessary “use” in Myanmar or vest rights of that trade mark.

Republic Act No. 8293, or the IP Code of the Philippines, extends legal protection in the form of copyright to the owner of the rights of an original work, including the following:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not composed in writing or other material form;
(d) Letters;
(e) Dramatic or musical compositions, choreographic works or entertainment in pantomime;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other work of art, models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not it can be registered as an industrial design, and other works of applied arts;
(i) Illustrations, maps, plans, sketches, and three-dimensional works relative to geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to photography, lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs;
(o) Other literary, scholarly, scientific and artistic works.

In the Philippines, works are protected by copyright from the moment of their creation, irrespective of their mode or form of expression, content, quality and purpose. However, registration of copyright is still required in order to establish the rights of the owner for purposes of seeking remedies against the copyright infringers. The author or creator of the work, his heirs, or assignee may apply in person or through a duly authorized representative. Foreigners are permitted to apply for registration but non-resident applicants must be represented by a duly authorized resident agent to whom notice or process for judicial or administrative procedure relating to the application or the registration may be served. You may, as the owner, file an application for a certificate of registration (in English or Filipino) and deposit copies of the work or works with the Copyright Division of the National Library or with the Intellectual Property Office, submitting the following documents:
1. Duly notarised copyright application form and affidavit;
2. Two copies of the document subject of the application;
3. Certified copy of the notarized assignment document if the applicant/owner is not the author of the work;
4. Copy of the business registration certificate of the applicant;
5. Power of attorney (POA) in favour of the agent, if applicable (must be accompanied by a board resolution/secretary’s certificate establishing the authority of the signatory to the POA if filing with the Intellectual Property Office of the Philippines).
In addition to the above documentary requirements, the applicant must also provide information regarding the date, place and person/entity that first completed the printing and the date, place and person/establishment where the work was first published or sold in the Philippines.
The addresses of the Copyright Division of the National Library and the Intellectual Property Office are as follows:
National Library of the Philippines
Copyright Section
5/F East Wing, NLP Building
T.M. Kalaw Avenue, Manila
The Philippines
email: [email protected]
telephone: (632) 524-27-37
Intellectual Property Office of the Philippines
Copyright Support Services
28 Upper McKinley Road, McKinley Hill Town Center
Fort Bonifacio, Taguig City 1634
The Philippines

The typical cost of Copyright registration in the Philippines is between EUR 350 to EUR 380 (including official costs of about EUR 11).

The outward appearance of your products can be protected in the Philippines as industrial designs. An industrial design is any new or original creation related to the ornamental features of shape, configuration, form, or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colours, which impart an aesthetic and pleasing appearance to the article.
Original ornamental designs or models for articles of manufacture, whether or not they can be registered as an industrial design, are also copyrightable. Thus, an original ornamental work may be protected both under an industrial design registration and under copyright.

The Bureau of Customs (BOC) handles applications for recordal of IPRs and products covered therein. At present, only importations are covered by Customs’ regulations.
Upon the registration of intellectual property rights with the Bureau of Customs (BOC), an IP holder who has valid grounds for suspecting that products with counterfeit trade marks or pirated copyright goods will be imported may lodge an application in writing with the Commissioner of the BOC for the issuance of a hold order on the release of such goods.
The IP owner or agent shall file a request in writing to the Commissioner of Customs for the issuance of a hold order on suspected counterfeit goods, providing as much detail as possible regarding the shipment, e.g., date shipment is coming in, on what ship, from what port, etc. Such legal protection lasts two years from the date that the recordal is confirmed.
The BOC has the authority to seize goods and there is a registration system for IPRs. In practice, however, the BOC lacks a systematised enforcement programme which means seizure of goods is often inefficient.

Submission of the following documentation in English or Filipino is required:
1. Completed Bureau of Customs (BOC) Forms.
2. Affidavit of applicant’s rightful ownership of the mark, copyright, patent or design.
3. Certification that the IP Code and Customs Administrative Order No. 6-2002 has been read and understood by the applicant.
4. Samples/pictures of products bearing the mark.
5. Three certified copies of the certificates of registration of the trade mark, utility model, industrial design, copyright or patent.
6. For copyright and related rights, an affidavit by the IP owner (or agent) that the copyright subsists in the work, that the applicant is the copyright owner and that a copy of the work annexed to the application is a true copy.
7. Power of Attorney for the representative.
The official fees vary depending on the number of goods covered by the recordal but can be up to a maximum of USD 480 for an unlimited number of goods per mark.

Outward appearance of your products can be protected in the Philippines as industrial designs. An industrial design must be any new or original creation relating to the ornamental features of shape, configuration, form, or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colours, which impart an aesthetic and pleasing appearance to the article.
Original ornamental designs or models for articles of manufacture, whether or not they can be registered as an industrial design, are also copyrightable. Thus, an original ornamental work may be protected both under an industrial design registration and under copyright.

In the case of your IP assets being infringed in the Philippines, there are four main avenues of enforcement you can consider which are outlined below: administrative actions, civil litigation, criminal prosecution, and customs seizures. In many cases, however, negotiations between the parties, if possible, are more cost effective and should be considered as a viable option.
Administrative actions
The Bureau of Legal Affairs of the Intellectual Property Department has jurisdiction over administrative complaints for IP violations, provided the total damages claim, as indicated in the complaint, is over approx. EUR 3,076. The procedure is similar to a simplified civil action procedure, with parties submitting a complaint and providing evidence upon which a decision is made. Administrative authorities have the power to impose preliminary injunctions, preliminary attachments (a provisional remedy wherein the court/administrative body is asked to take custody of the property of the adverse party as security for satisfaction of any judgment) as well as damages and administrative fines.
Civil Enforcement
The IP owner also has the option to file a civil action for recovery of damages and injunctions. Civil actions for IP infringement are filed at the regional trial courts. Such cases are not common because they tend to last many years. First instance civil trials normally take two to three years, but are usually followed by appeals which drag the case on much longer.
The amount of damages recoverable shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event that such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.
In any suit for infringement, the owner of the registered mark shall be entitled to recover profits or damages only if the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words ‘Registered Mark’ or ‘®’ or if the defendant had otherwise actual notice of the registration. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled. In addition to damages, other remedies that are available to the complainant are the following:

• On application of the complainant, the court may impound, during the pendency of the action, sales invoices and other documents evidencing sales.
• The complainant, upon proper showing, may also be granted injunction.
• In any action in which a violation of any right of the owner of the registered mark is established, the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colourable imitation thereof, all plates, moulds, matrices and other means of making the same, shall be delivered up and destroyed.

Criminal Prosecution
Under the IP Code, the criminal penalties of imprisonment and fines may be imposed to persons found guilty of trade mark infringement, unfair competition, false designation of origin and false description or representation. As earlier mentioned, there is also criminal liability in repetition of patent infringement. In practice, counterfeiting and piracy are typically dealt with by the criminal system, usually under copyright, trade mark and unfair competition laws. As criminal litigation tends to take years to finish at the first instance, criminal prosecution is normally sought out only for large scale infringement.
The IP holder should request the enforcement agencies, particularly the Philippine National Police (PNP) or the National Bureau of Investigation (NBI), to file a complaint with the District Court that has jurisdiction over the crime committed (usually the court in the area where the infringement occurred). Although the participation of the PNP and the NBI are not required in order to institute criminal proceedings against infringers, they are necessary in order to preserve the chain of custody of evidence, which are normally questioned by defence lawyers in seeking the dismissal of a criminal action.
Customs Seizures
Upon registration of the intellectual property rights with the Bureau of Customs, an IP holder who has valid grounds for suspecting that counterfeit trade marks or pirated copyright goods will be imported may lodge an application in writing with the Commissioner of the Bureau of Customs for the issuance of a hold order on the release of such goods.
The IP owner or agent shall request in writing to the Commissioner of Customs for the issuance of a hold order on suspected counterfeit goods, providing as much detail as possible regarding the shipment, e.g., date shipment is coming in, on what ship, from what port, etc. Such legal protection lasts two years from the date that the recordal is confirmed.

The following items are not patentable in the Philippines:
1. Discoveries, scientific theories and mathematical methods;
2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;
3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods;
4. Plant varieties, animal breeds, or essentially any biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes;
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.
Chemical compositions are patentable. Pharmaceuticals are patentable but secondary use of known drugs and medicines is not patentable. Methods for treatment of the human body by surgery or therapy and diagnostic methods practiced on the human body are not patentable. Biological materials are patentable except for plants and animals. Plant varieties are not patentable but are protected under the Plant Variety Protection Act of 2002 [Republic Act No. 9168].
Under the amendments introduced by the Cheaper Medicines Act to the IP Code, the following are excluded from patent protection:
• A new form or new property of a known substance which does not result in the enhancement of the known efficacy of that substance.
• New property or new use for a known substance, or the mere use of a known process unless such known process results in a new product that employs at least one new reactant.
Examples provided are salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance, unless they differ significantly in properties with regard to efficacy.

Patent rights belong to the inventor, his heirs, or assignees. When two or more persons have jointly made an invention, the right to a patent shall belong to them jointly. Foreigners or non-residents may apply but they must appoint a local agent to whom notice or process for judicial or administrative procedure relating to the application or the registration may be served. A patent application in English or Filipino shall be accorded a filing date when the following are filed with the IPO:
1. An express or implicit indication that a Philippine patent is sought (a Request for Grant of a Philippine Patent form must be submitted);
2. Information identifying the applicant; and
3. Description of the invention and one or more claims in Filipino or English.

The request for grant of patent shall contain the following:
1. Petition for the grant of a patent;
2. Applicant's name and address;
3. Title of the invention;
4. Inventor's name;
5. If with a claim for convention priority, it shall contain the file number, country of origin and the date of filing in the said country where the application was first filed;
6. Name and address of the resident agent/representative (if any);
7. Signature of the applicant or resident agent/representative.
Once all application requirements have been met, the application will be published after 18 months from filing, afterwards it undergoes substantive examination. Following the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. If the examiner finds that the invention subject of the patent application is new, inventive and industrially applicable, then a patent is granted for the invention.
The basic filing fees are as follows: Patent registration EUR 70 and upwards; agent fees are around EUR 525. For further details, please see http://ipophil.gov.ph/index.php/patents/fees

The IP Code enumerates marks that cannot be registered, which include marks:
-Containing immoral, deceptive or scandalous matter;
- Consisting of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
- Consisting of a name, portrait or signature identifying a particular living individual except by his written consent;
- Consisting of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
- Consisting of colour alone, unless defined by a given form; or
- Contrary to public order or morality.
Three-dimensional marks and collective marks can be registered.
Certification marks, associated marks or series of marks are not applicable in the Philippines.

The application in English or Filipino must be accompanied by a request for registration, signed by the applicant or his representative. Individuals and corporate entities/registered organisations may apply for the registration of a trade mark. Foreigners and non-residents can apply but they must be represented by a duly authorized local agent to whom notice or process for judicial or administrative procedure relating to the application or the registration may be served.
A filing date is assigned to an application upon receipt by the Intellectual Property Office (IPO) of the filing fee and the following:
1. An express or implicit indication that the registration of a mark is sought;
2. The identity of the applicant;
3. Indications sufficient to contact the applicant or his representative, if any;
4. A reproduction of the mark whose registration is sought; and
5. The list of the goods or services for which the registration is sought.
The above information is indicated in a request for registration of a mark (form provided by the IPO). Among the details that are required to be included are the following: applicant's name, country of residence or incorporation and complete address, telephone; fax; and email; and the name and address of the resident agent or authorized representative.
Applications must be filed with the IPO, addressed to the Director of the Bureau of Trademarks of the Intellectual Property Office of the Philippines.
Intellectual Property Office
World Finance Plaza Building
#28 Upper McKinley Road
McKinley Hill Town Centre
For Bonifacio, Taguig City
The Philippines

Online filing is an option but is available only to entities that have accounts with designated local banks.
The basic filing fee for trade mark registration in the Philippines is EUR 34 and upwards but an Agent’s fee is typically around EUR 390. For further information, please see http://ipophil.gov.ph/images/Trademark/TrademarkFees.pdf.

If a company is found to have infringed a copyright to obtain commercial advantage, both the company and the employee responsible will be legally liable in Singapore. Penalties for such an offence include a fine and/or a term of imprisonment.

Copyright protection for photographs lasts 70 years from the end of the year in which the photograph was first published.

Unlike other ASEAN countries, Singapore has no system of registration of copyright. Works that qualify for protection under the Copyright law do not need to be registered, because copyright protection is conferred automatically to the author as soon as it is expressed or fixed in a material form (e.g. paper, tape, CD, etc.) from which it is capable of being reproduced.

Unfortunately, since there is no official records system through which you can request Customs to monitor and notify you of suspected infringing goods which are being imported into Singapore, you should not rely on Customs to discover or monitor such shipments on your behalf. Instead you will need to be proactive about monitoring this yourself. However, if you already have details about a suspected illegal shipment in advance, you can activate border enforcement by giving written notice to Customs of a suspected import of IPR-infringing goods. This will apply only to registered trade marks and copyrights and you can only activate border enforcement for IP that is registered in Singapore.

A written notice in the official form must be filed with Customs to inform them of the suspected import of IPR-infringing goods. The IPR owner, its licensee, or their agents can give a written notice to Customs of a suspected import of IPR-infringing goods. The notice may be sent via:
Email: [email protected]
Delivered in person/via post to: Singapore Customs, 55 Newton
Road #10-01, Revenue House, Singapore 307987
The notice must be accompanied by:

• a statutory declaration that the particulars in the notice are true;
• a fee of around EUR 123 (200 Singaporean dollars);
• where the notice is given by your agent, evidence of the authority of the person giving the notice;
• in the case of suspected trade-mark infringing goods, a copy of the certificate of registration in relation to your Singapore registered trade mark.

In the case of your IP assets being infringed in Singapore, there are three main avenues of enforcement which you can consider: civil litigation, criminal prosecution and customs seizures. However, in many cases private mediation via legal professionals can be more effective and should be considered as a viable option, particularly for SMEs that are often faced with budgetary constraints. Unlike other ASEAN countries, there are no administrative actions available in Singapore.

A utility model, also called a “simple patent” (Indonesia) or “utility solution patent” (Vietnam), is a specific form of IP protection which is not available in all ASEAN countries. It protects technical solutions like inventions which have sufficiently low levels of inventiveness. The protection period is usually shorter than for patents but the process for obtaining it is also generally quicker and easier.
Unlike other ASEAN countries, Singapore only has one official type of patent. In order to obtain it, an invention must satisfy certain criteria. It must show novelty, have an inventive step (not required for utility models) and be industry applicable.

Singaporean patents are valid for 20 years from the date of filing, subject to payment of annual renewal fees starting from the end of the 4th year.

People or companies residing in Singapore may not file an application for a patent outside Singapore without first filing for the patent in Singapore, unless authorization has been obtained from the Intellectual Property Office of Singapore prior to the filing of the patent.

A request for a grant of patent must be made via an official form and submitted to the Intellectual Property Office of Singapore either online via ePatents or directly by post to the Registry of Patents of the Intellectual Property Office of Singapore. The application must be accompanied by:

• The application fee;
• An English translation if any documents provided are in a language other than English;
• A copy of your application filed earlier in a Paris Convention country or a WTO member country (if you wish to claim this earlier date as your ‘priority date’).

Please refer to the Website of the Intellectual Property Office of Singapore for details and further information on the application and registration process: http://www.epatents.gov.sg/default_redirect.asp
Registrations in person can be made at this address:
Intellectual Property Office of Singapore
51 Bras Basah Road #04-01, Manulife Centre, Singapore 189554
(65) 6339 8616

Not necessarily. Obviously, you can apply for a national registration directly through the national intellectual property office in Singapore. However, you also have the possibility to file for registration by way of an international application designating Singapore, since the latter is one of three ASEAN countries (besides Vietnam and Philippines) that have implemented the Madrid Protocol. Under this treaty, it is possible to file a single application in one member country in order to seek trade mark protection in multiple member countries. International applications are administered by WIPO’s International Bureau. This system can be cost saving as it eliminates the need to hire local agents to file local applications in countries of interest. You can read extensive information about international applications by following the link below:
http://www.wipo.int/madrid/en/

If the trade mark registration is granted in Singapore, you or your licensee shall put that mark to genuine use in the course of trade within the period of five years from the date of completion of the registration procedure. Failure to do so may result in your registration being revoked for non-use.

You can try to protect your invention as a trade secret. Trade secrets are protected under Singaporean law. However, the trade secret must be confidential, meaning that the information is not freely available in the public domain. You must also be able to prove that an obligation of confidence was clearly stated during your dealings with third parties, such as the signing of non-disclosure agreements or having a confidentiality clause within your agreements with other parties and employees.

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. There are two types of patents available under Vietnamese law: Invention Patents and Utility Solution Patents.
Invention patents are granted for inventions that are novel, involve an inventive step, and have an industrial application.
Utility solution patents do not require an inventive step (novelty and capability of industrial application are enough). However, the law still requires the utility solution to be something more than common general knowledge.

An invention is deemed novel if it has never been publicly disclosed inside or outside Vietnam prior to the filing date or priority date either by means of use, written description, or in any other way.
The only exceptions are:
1. If the person who previously disclosed the invention did not have the right to register the patent;
2. If the invention was disclosed by the applicant in the form of a scientific report;
3. If the applicant displayed the invention at a national exhibition in Vietnam or another officially recognised international exhibition.
An invention is not considered publicly disclosed if it is known to only a limited number of people who are obliged to keep it a secret.

In line with most Asian and EU countries, Vietnam operates under a ‘first-to-file’ system, meaning that the first person to file a patent in the Vietnamese jurisdiction will own that right once the application is granted, regardless of whether another party was the inventor or the first to use the patented creation. This means that if a potential partner or other third party files your patent or trade mark in Vietnam before you do, that party will be the legal owner of your IP. Therefore it is essential to make your IP registrations in Vietnam before commencing business dealings there, and to be careful how much information you disclose to third parties. In the case that two or more applications are filed for the same invention or industrial design, the two applicants must agree to proceed with only one application. If an agreement is not reached between the parties, all applications will be refused.

As Vietnam is a member of the Patent Cooperation Treaty (PCT), registration can be made directly in Vietnam, or internationally via the PCT procedure. Application requirements and approval time may be reduced when applying for an Invention Patent or Utility Solution Patent via the PCT system and the application process can be further accelerated by paying an additional fee.
To obtain a patent, an application must be filed with the National Office of Intellectual Property of Vietnam (NOIP). The application dossier must contain the following:
1. A request made in the standard form provided by the NOIP.
2. Documents, samples, and information identifying the invention/utility solution.
3. Receipt of fees and charges.
4. Power of Attorney, if a representative is making the filing on your behalf.
5. Documents demonstrating that you own the right to registration, if the invention has been acquired from another person.
6. Documents demonstrating the priority right (if you are claiming this).
Patent registrations should be filed at the below address:
National Office of Intellectual Property of Vietnam (NOIP)
384-386 Nguyen Trai Street, Thanh Xuan District, Ha Noi
+84 (0) 4 3858 30 69 / +84 (0) 4 3558 82 17
See the ASEAN IPR SME Helpdesk IP Country Factsheet for full details on how to register IP assets there.

Copyright grants two kinds of prerogatives: economic rights and moral rights. Owning the economic rights means you have the exclusive right to edit, reproduce and distribute the work, e.g. to sell it or licence to someone else. However, as an author of a copyrighted work you always maintain the right to claim authorship of your book, as well as the right to object to a distortion and mutilation of the work that may be detrimental to your honour or reputation. These rights are generally known as moral rights and cannot be transferred or licenced to anyone.

A copyright owner’s moral rights are protected for an indefinite term, with the exception of the exclusive right to publish the work or authorise somebody else to publish it. In line with the minimum requirements set out in the Berne Convention, the exclusive right to publish the work and authorise somebody else to do so, and the economic rights, last for the lifetime of the author plus 50 years, with the exception for cinematographic works, photographs, plays, applied art works, and anonymous works, which are protected for 50 years from the date of first publication, with no possibilities for extension.

Copyrights that are already granted in countries that are part of the Berne Convention, of which Vietnam is a member, are already granted in all other treaty countries. The convention also means that you as the creator automatically own the copyrights without the formal need to register them. However, it is still advisable to register copyrights in Vietnam because this will make court proceedings easier if you ever need to enforce these rights before a Vietnamese court. Copyright certificates are also required in certain enforcement procedures.

While registration of copyrights is not required, it is advisable, and can be made with the National Copyright Office of Vietnam (NCO), or the Department of Culture in the localities where your office is located. Foreign copyright owners, however, can authorise the Copyright Service Consulting Organisation to file the registration on their behalf. The application must comprise the following:
1. Declaration for registration of copyright signed by the copyright owner (including information on the applicant; summarised content of the work, performance etc.; the name of the author and title of work used to make the derivative work, in case of registration of derivative works; date, place and form of publication; and undertaking accepting liability for the information set out in the application).
2. Two copies of the work (for works such as paintings a 3D photo is sufficient).
3. Receipt of paid application fee.
4. Power of attorney, if the applicant is an authorised person but not the copyright owner.
5. Document proving the right to file the application, if the right was acquired through inheritance, succession or assignment.
6. Written consent of co-authors, in cases of joint authorship and/or ownership.
The NCO is required by law to notify you in writing whether or not the copyright has been granted within 15 working days from the date of receipt of a valid application. Copyright registrations should be filed at the below address:
National Copyright Office of Vietnam (NCO)
151 Hoang Hoa Tham, Ba Dnh District, Ha Noi
+84 (0) 4 843 39 88 ext. 201
The Copyright Office’s Representative Office in Ho Chi Minh City
7 Nguyen Thi Minh Khai, District 1, Ho Chi Minh City
+84 (0) 8 623 41 32

Authors, copyright holders and related rights holders may directly file for copyright registration, or may also authorise other organisations or individuals to file for them. ‘Copyright holders’ are defined by Vietnamese law as organisations or individuals who hold one, several or all of the economic rights in the work. ‘Authors’ are those who originally create the work (moral right owners). ‘Related rights holders’ include organisations and individuals who use their time, make a financial investment in, or use their materials and technical facilities to give a performance or to produce an audio and visual fixation.

The typical cost of Copyright registration in Vietnam is between EUR 5 and EUR 25 per certificate exclusive of legal fees (VND 100,000 to VND 600,000), depending on the type of copyright applied for.

Although registering with Vietnamese Customs is not mandatory, it is advisable to add yourself to their database as it will help the Customs authorities to recognise counterfeit versions of your product, and improve the chances of such suspect items being blocked at the border.
If you know of a suspected illegal shipment of your products you can also work together with Vietnamese Customs to detain such shipments.

In order to monitor the flow of infringing goods crossing Vietnam’s borders, you will need to initiate customs recording by filing a request with the General Department of Customs. Vietnamese IP right holders may file the request with the General Department of Customs directly. Foreign IP right holders must file the request via an IP Agent. The application must be in Vietnamese. However, the standard forms provided by the General Department of Customs are issued in both English and Vietnamese.
A request for recording must contain the following mandatory documents:
• Certified copies of your IP Certificates of Registration e.g. trade mark registration certificate;
• Documents relevant to the goods you wish to register with customs, including: list of authorised importers/exporters, mode of importation/exportation of genuine goods, description of how to distinguish the genuine goods from infringing ones, documents on the origin of genuine goods, and pictures of genuine goods;
• A notarised and legalised Power of Attorney (if you are filing through a local IP Agent)
• In addition, the applicant should submit the following supporting documents (if available):
- Information on estimated time and venue of import and export;
- Expert opinions on infringing goods;
- Sanctioning decisions made by enforcement agencies in previous cases of infringement of the goods you are registering (if applicable).
The Customs Office should notify you whether your application has accepted or rejected no later than 20 days from the receipt of the request. Requests should be filed at the below address:
General Department of Vietnam Customs
Area E, Duong Dinh Nghe Street, Cau Giay District, Hanoi, Vietnam
Tel: 00844 44520606 - ext. 8624
Email: [email protected]
Vietnam Customs
No 162, Nguyen Van Cu Street, Long Bien district, Hanoi Capital, Vietnam
Tel: 00844 44520424
Email: [email protected]
There is no official cost for filing a request for registration with Vietnamese Customs.

An industrial design is considered 'new' if it differs substantially from industrial designs that are already disclosed to the public inside or outside Vietnam. An industrial design is deemed creative if it cannot easily be created by a person with average knowledge in the relevant field. The assessment is made taking into account industrial designs that have already been publicly disclosed inside or outside Vietnam prior to the filing date or priority date (if priority is claimed). An industrial design is considered capable of industrial application if it can be used as a model for mass manufacture of products having the outward appearance embodying such industrial design by industrial or handcraft methods.

In the case of your IP assets being infringed upon in Vietnam, there are four main avenues of enforcement you may consider: administrative action, civil litigation, criminal prosecution, and customs seizures. In many cases however private mediation via legal professionals is more effective and should be considered as a viable option.
Administrative action
Administrative action can be both cost-effective and time-efficient, and is certainly the most common route for most companies to take when an infringement is discovered. It is often the best way to deal with small-scale infringers and in gathering evidence on larger-scale infringers, and is the best option if the IP right holder’s main priority is to immediately stop on-going IPR infringement.
Depending on the value and nature of the case, different governmental bodies may be involved in the action, such as the Inspectorate of Science and Technology, the police, market control force, Vietnamese Customs, Vietnam Competition Authority, etc., and will be able to issue different penalties such as issuing Cease and Desist orders, revoking business licenses, issuing monetary fines, or the confiscation and destruction of infringing goods. While such penalties are generally not as harsh as penalties that can theoretically be awarded under civil litigation or criminal prosecution, in practice administrative actions may offer a more realistic chance of stopping infringers quickly, and in some cases obtaining damages.
A request to apply administrative measures against IPR infringement should be filed with a relevant enforcement authority and include:
• Documented evidence of ownership of the infringed IPR
• Proof of damages caused by the infringement (however in practice, if infringement has been committed this is already considered as proof of damages)
• Evidence of infringement (e.g. samples or photographs or the counterfeit/infringing goods)
• Expert’s opinion (if available)
• Power of Attorney, if the request is filed by an IP Agent
• The authority will examine the request within one month from the filing date. When the request and its accompanying documents are found to be satisfactory, the relevant authority will then raid and seize infringing goods without prior notice to the infringer. If infringement is found, the relevant authority will impose sanctions upon the infringer.
Consequences of administrative cases may include the following:
• Primary sanctions, which include either a warning or a fine up to VND 500 million (about EUR 18,000). This fine must be paid to the State Treasury.
• Additional sanctions, which include confiscation and/or destruction of infringing goods, as well as means for producing the infringing goods, and suspension of business license.
• Other consequences which include: the removal of infringing elements from a product; withdrawal of domain name and/or company’s name containing infringing elements; recall of infringing goods already on the market; recovery of illegal profit which the infringer makes from the infringement; and compulsory distribution or use of infringing goods (as well as the means of production such as the machinery used) for non-commercial purposes, as long as this does not influence the IP right holder’s commercial activities.
Illegal profits recovered will go to the State Treasury. For IP holders to claim damages they must pursue civil litigation against the infringer.
Civil Litigation
Civil litigation is more suited to addressing larger scale infringements but it should be noted that very few civil litigation cases are brought to court in Vietnam. In 2006, 65 civil litigation cases were brought to court, while the following year in 2007 this number decreased to just 26, while administrative actions increased. This is due to several reasons, such as the length of time required to bring a case to court, and because there is a lack of proper IP training and human resources within the judicial system, meaning that case outcomes can be somewhat unpredictable. Damages are often based on the amount of lost sales or the infringer’s profits, however if the actual amount of damages owed cannot be determined, the maximum amount the court can award in damages is approximately EUR 18,000 (VND 500 million). The Vietnamese authorities are still working towards improving training for court officials, judges, customs authorities, and other IP enforcement agencies by cooperating with other international organisations and government agencies.
By taking civil actions, IP right holders can request provisional measures (preliminary injunctions) and claim remedies available under law, especially claims for damages. To initiate a lawsuit, you will need to file a petition and show all necessary documents to the court within two years from the date on which you discover that your rights have been infringed.
Criminal Prosecution
While relatively rare, criminal prosecutions have the power to award the harshest penalties for IP infringement. Criminal charges in Vietnam can be brought against copyright or related rights infringers for the reproduction or distribution of the work to the public, and this infringement must be deemed to be on a ‘commercial scale’. Criminal charges can also be brought against industrial property rights infringers, where the object in question is counterfeit trade mark goods, provided that the infringement is intentional and on a ‘commercial scale’.
Penalties for copyright and industrial property right infringement include a monetary fine up to EUR 38,000, and imprisonment up to three years. The cost of criminal prosecution is borne by the authorities, and a favourable ruling could be a valuable deterrent to potential future infringers.
Customs Seizures
Although registering with Vietnamese Customs is not mandatory, it is advisable to add yourself to their database as it will help the Customs authorities to recognise counterfeit versions of your product, and improve the chances of such suspect items being blocked at the border. If you know of a suspected illegal shipment of your products you can also work together with Vietnamese Customs to detain such shipments. Although legally Vietnamese Customs are obliged to monitor all types of intellectual property, in practice this only usually applies to trade marks, geographical indications, and copyrights and related rights.

Since the new Vietnamese IP laws in 2006, Geographical Indications are now recognised and can be registered in Vietnam. This applies to the protection of products, of which the name includes a region or country, which originate from that geographic location, such as Spanish ‘Queso Manchego’, or Italian ‘Prosciutto di Parma’. Once obtained, these rights will last indefinitely, without the need to renew the registration every 10 years.

Yes. In Vietnam three-dimensional signs (shapes) can be registered as trade marks, provided that they comply with the number of circumstances foreseen by the Vietnamese law. Thus, a mark must be distinctive, i.e. consist of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination. It cannot be identical with or confusingly similar to national flags, names of political organisations and real names and should not cause misunderstanding or confusion as to the origin, properties, quality, or other characteristics of the goods or services. It also cannot be identical or confusingly similar to another person’s mark already registered or used for identical goods or services.

Trade mark protection lasts for 10 years from the filing date in Vietnam, with the option to extend for consecutive 10 year periods an unlimited number of times. The registration process typically takes up to 15 months.

Trade mark registrations should be filed at the National Office of Intellectual Property (NOIP), with the preliminary examination of applications usually completed during the first three months after receipt. Following this, there will be further evaluations for the following 9-12 months.
The application dossier must contain the following:
1. A request made in the standard form provided by the NOIP.
2. Documents, samples, and information identifying the trade mark.
3. Receipt of fees and charges.
4. Power of Attorney, if a representative is making the filing on your behalf.
5. Documents demonstrating that you own the right to registration, if the trade mark has been acquired from another person.
6. Documents demonstrating the priority right (if you are claiming this).
Trade mark registrations should be made at the below address:
National Office of Intellectual Property of Vietnam (NOIP)
384-386 Nguyen Trai Street, Thanh Xuan District, Ha Noi
+84 (0) 4 3858 30 69 / +84 (0) 4 3558 82 17

Trade secrets are defined by Vietnamese law as ‘information obtained from financial or intellectual investment activities, which have not been disclosed and are applicable in business’. A piece of information falls under the definition of a trade secret when the information:
1. Has not been made public, and is not common knowledge;
2. Gives its owner a business advantage;
3. Remains secret because the owner takes necessary measures to protect the confidentiality of the information.
Typically trade secrets could include new products or business models, special techniques, customer and supplier lists, technical know-how, etc.
Please bear in mind that, as trade secrets are a relatively new addition to Vietnamese IP law, the Vietnamese authorities have not dealt with any infringement cases relating to trade secrets to date.

Trade secrets are protected upon creation without any registration, provided that reasonable measures have been taken to keep the information secret.

The following information may NOT be protected as a trade secret:

1. personal status secrets;
2. state management secrets; and
3. other confidential information which is not relevant to business.