In Episode #4, we discuss intellectual property rights (IPR) in Southeast Asia with Geetha Kandiah, director at KASS, one of the leading IP firms in the region. We cover:

  • The composition of Southeast Asia and its diverse legal traditions.
  • The state of IPR protection in Southeast Asia: increasing harmonization with international standards, but persistent challenges.
  • Singaporean Daren Tang’s election to head the World Intellectual Property Organization (WIPO).
  • Why international brands entering Southeast Asian markets often choose to buy their own trademarks.
  • The impact of local languages on brand protection strategies.
  • Suitable dispute resolution mechanisms for the region.
  • Protecting against sales of counterfeits on e-commerce platforms.
  • Recommendations:

This podcast audio has been transcribed by an automatic transcriber.

Fred Rocafort 0:07

Law and global business go hand in hand and never seem to keep pace with each other and other developing and developed nations wax and wane in their importance in the global stage. While consumption and interconnectedness both increase laws and regulations changes simply requiring businesses to stay nimble. How do we make sense of it all? Welcome to global law and business hosted by Harris Bricken International Business attorneys. I’m Fred Rocafort,

Jonathan Bench 0:35
And I’m Jonathan Bench. Every Thursday, we take a bite sized look at legal and economic developments in locales around the world as we try to decipher global trends in law and business with the help of our international guests. We cover continents, countries, regimes, governance, finances, legal developments, and whatever is trending on Twitter. We cover the important the seemingly unimportant, the relatively simple and the complex. We hope you enjoy today’s podcast. Please connect with us via email and social media to comment and suggest future topics and guests.

Fred Rocafort 1:21
In 2005, a couple of months after taking up a diplomatic post at the US Consulate General in Guangdong, China, I had the opportunity to travel to Laos to assist my colleagues at the embassy there during an official visit. Up until that moment, Thailand was the only Southeast Asian destination that I had on my list of places to visit during my China tour. As it happened, I would have to overnight in Bangkok on the way in and out of Laos. I figured that would be enough as far as Southeast Asia was concerned. I was gravely mistaken. Entranced by Thailand and Laos, I instead became intrigued by the rest of the region, and set out to explore it bit by bit. My efforts received a great boost in 2015. When my then employer to kind of project that required extensive travel to the region, I ended up spending more time than I ever imagined in places like Saigon, Phnom Penh, Yangon and Jakarta. With Islamic Indian, Chinese and indigenous cultures mixed in with British, French, Dutch, Spanish and even American colonial influences. It’s not surprising that the region is one of vast diversity. At the same time, there are common themes that unite the region, one of which is the dynamism of the local economies. Vietnam, for instance, has not seen annual GDP growth dropped below 5% this entire century, although of course, that could change due to the COVID 19 pandemic. This dynamism is intrinsically linked to Southeast Asia’s rise as an alternative manufacturing destination for international companies that want to shift or diversify production away from China. In addition to their competitive costs, economies in Southeast Asia are not saddled by the geopolitical pressures that weigh on their neighbor to the north, and also offer interesting domestic markets in their own right. Today we focus on an issue that lies squarely at the intersection of business and law, intellectual property. This topic will allow us to explore not only the momentous economic shifts that are taking place across Southeast Asia, but also how different legal traditions approach critical challenges to talk with us about intellectual property rights and Southeast Asia. We are privileged to have with us, Geetha Kandiah and attorney at KASS, a Malaysia based IP firm with offices in Malaysia, Singapore, Indonesia, Thailand, Myanmar and Vietnam. In addition to being admitted to the British and Malaysian bars, Geetha is a registered IP agent in Singapore and Malaysia. She joins us today from Kuala Lumpur, welcome to the show.

Geetha Kandiah 3:55
Thank you for thanks for having me over.

Fred Rocafort 3:59
It is my pleasure. I’m unfortunately flying solo today, my co host, Jonathan is not able to join us. But in any case, let’s dive in. And before we go any further, could you please help us define Southeast Asia? As I just mentioned, it’s a very diverse region. And I would imagine that there is at least a little bit of debate regarding where the borders of Southeast Asia lay Exactly. So if you can, if you could give us at least your own definition, that would be great.

Geetha Kandiah 4:35
If they taught you that you have been to Asia and you’ve been to many countries in Southeast Asia. I studied in the UK for four years and explaining to people where Malaysia is really interesting. The easiest way to explain what Malaysia is was explaining where tourist destinations were, which is Singapore and Thailand. Counting to Asia is countries. A group countries that are below China. And they are tricky for the Indian subcontinent and not west to Australia and New Zealand. So, again that is why it’s called South East Asia, south of China and the eastern part of the Indian subcontinent. It has many islands, including Indonesia and Philippines, and it also has mainland and indo-Chinese countries, which connected to China.Southeast Asia, as you rightly mentioned for is very much based on countries that are developing, most of them are developing countries and they are the third largest economy in Asia. And that is why a lot of companies even before the COVID-19 were really looking at parking their production houses or even their headquarters in Southeast Asia to represent Asia Pacific countries. Southeast Asia is also the seventh largest economy in the world. Their population is regarded as a group of countries that 10 countries in Southeast Asia. This group of countries have 655 million population. The total GDP of Southeast Asia 2.3 trillion US dollars. So Southeast Asia or RCM. In this region, we call it as SEA, SEA or RCM. They represent 10 countries, and that is Malaysia, Singapore, Indonesia, Philippines, Thailand, and in some countries in India, China with Vietnam, Myanmar, Cambodia, Laos, and Brunei as well. So these are the 10 countries that are confident Southeast Asia.

Fred Rocafort 6:55
That is indeed a very, very diverse group of countries. And anyone who’s had the opportunity to travel into region would be aware of that you’re talking about different languages, different cultures, different religions. At the same time, I think that there are, as I mentioned in my introduction, I do think that there are some some unifying threads. And when companies referred to Southeast Asia as a region as an entity there has to be some some logic behind that. So but before but before we do that with with let’s look a little bit at those those differences, so perhaps with a with a specific focus on their legal systems, Could you just tell us a little bit about the diversity of the region and how the countries in Southeast Asia differ from one another, and what that means for businesses that then go into those markets?

Geetha Kandiah 7:51
That’s a very good question.

Although there’s a lot of similarities in terms of culture and tradition and behavior. All the people in Southeast Asia, that the legal system is different in Europe, and it really is historical is based on which country colonized the Pacific Asian countries. So, for example, we have the British colonies, which is Singapore, Brunei and Malaysia. They follow common law as the UK system. And that means that they although they have statutes, the court when they make decisions based on the statue, the decision from the court actually carry you every week. And that serves as practice. Whereas in some countries like Thailand, for instance, we follow the law where it’s very much statutory base, similar to China, which is also the law and the base decisions are 45 statues as opposed to adjudicate use cases. And then you have Vietnam Cambodia, Laos, which also follows statutory law and to follow the French legal system, because sorry case while the French were in these countries, Myanmar is unique, they used to follow the British legal system and in 1970s that changed and they have their own legal system now as well. So, it is a range of federal law, statutory base and common law which is to be held constant. And this very much goes into intellectual property or cases will be held here hobbyist fighting as well.

Fred Rocafort 9:39
That is just a fascinating array really of legal systems. And of course, that means that whenever we are talking about Southeast Asia, we have to caveat that that discussion by by pointing out that as you very very eloquently did that. We are dealing with systems that that have their origins and in a variety of traditions. That said, to the extent that it is possible to generalize, could you give us an overview on the state of intellectual property rights protection in Southeast Asia?

Geetha Kandiah 10:13
Asia is extremely interesting. Being in the group of 10 countries and developing countries create that diversity in the intellectual property protection system in Southeast Asia. Because of Singapore, you have an extremely diverse system. You have in the Intellectual Property Office of Singapore, which is constantly challenging itself to be the best in the world, and the concerns of the gold standard of IP protection, thanks to a very active and innovative idea of it. In fact, you may know Fred, that the the person in the World Intellectual Property Office has been selected from Singapore, the guy in town. He’s the chief editor. You could think of Intellectual Property Office in Singapore. And he was he recently won the nomination to take the World Intellectual Property Office. That itself signifies how advanced Singapore is and how you’re going now obtain the world leader. So you have Singapore, which has an extremely good intellectual property system. And then you have mid range system. Mid range being Malaysia, Indonesia, Philippines and Thailand. They’re all catching up to what Singapore is but still are far behind. Many of these intellectual property officers only recently started having online filing pointment on the students filing of documents upon completion of pieces came on copyright were done manually, manual applications and only recently already completed to online filing, which is very fortunate considering it now. What’s happening with a pandemic and then everything pretty much online, that the both of these countries to many intellectual The offices even though there is a lockdown, or restricted movement, then we have countries like Myanmar, which is far very far off from where Singapore is where Malaysia, Indonesia and the other countries are nanocone recently enacted intellectual property laws. And that means that prior to 2017 there was many cautionary notices being passed to protect intellectual property rights. If any company has technology, they wanted protection in Myanmar, of grants that needed protection. These were all published in the newspaper so that the public are aware of intellectual property rights. There was no legal statute. No country wants to help intellectual property owners to have right make a right and that’s what Myanmar was until they enacted the laws recently. Even though the laws have been enacted in Myanmar, they haven’t been enforced. And we have been waiting for two years now for the laws to be enforced. But it has been quite political and it’s been a lot of delay on that and, and now with a pandemic and all the countries are have bigger fires to put out. Again, it would be totally nice. And the other thing about Southeast Asia is, although it is waiving levels of development of intellectual intellectual property protection system in the country, the one thing that we do share is that they have an Harmonized System compared to where the rest of the world is. So and what I mean by that is that they have caught up with the World Intellectual Property treaties. And they have signed it differently than competition treaties. So many countries, in fact all the countries except for Myanmar, members of the PvP system Malaysia was not open to many countries and joined the Madrid system. So before it is all the countries were members except for Malaysia and Myanmar and Malaysia recently in December last year joined the Madrid protocol for some international trademark can also enter Malaysia is limited to the Kong system. So right now, all the countries in Southeast Asia have caught up and are harmonized in the sense that foreign companies and foreign parties can protect intellectual property rights to the existing international systems available, all except for Myanmar.

Fred Rocafort 14:39
That’s very interesting. It’s good to see obviously from from the perspective of our international clients, it’s good to see how the countries in the region for the most part are looking to improve their IPR protection and harmonize their their systems at the same time, I’m sure that there are considerable challenges, even though I got to spend quite a bit of time doing work in that region, most of it was it helping local suppliers, for our clients, local suppliers, helping them protect their facilities against intellectual property theft, I didn’t really get a chance to do some of the enforcement work that I did in in China, and other and other places. So I can only imagine what what those challenges most most looked like. Could you Talk to us a little bit about that? what it looks like when you’re actually trying to work with law enforcement, to take action against counterfeiters, what it looks like if you have to, for example, go to court to try to stop someone from infringing on your trademark.

Geetha Kandiah 15:56
Not easy in SouthEast Asia. So it’s a very relevant question in terms of how is enforcement proceedings done in Southeast Asia is for foreign international companies, it becomes crucial actually for them to not to wait to enter the countries, the cases and the challenges that they have in Southeast Asia is that the ends of the country and then they look at protecting the map. And it is very risky in Asian countries because many countries exercise the first two files with them for three months especially. And that means that if they do not follow them up first, we are hijackers. We are trademark which has so many of the challenges is trying to negotiate to have that trademark plant but even for price, and many clients are willing to buy the trademark because it’s just a lot more easier compared to going to court. It is the cost is In many of these countries, including Singapore and Malaysia which is quite cost and they have timelines in which court hearings must be held. A battle in court can take up to three years in any country. So apart from the timelines, and then you have the cause, it’s a lot easier to negotiate and lock back. That’s what we find happening quite often in Southeast Asia, in terms of foreign companies want to load in America and you entering for enforcement wise, the system is there. So all as mentioned before, all the all countries except for grandma has IP legislation drawn out. So if you go to this there is evidence to show who the true owner is, regardless of whether it’s a patent or trademark or copyright. And you run through the system. There is avenues and is released that can be thought. It’s a question of time period, as it does take three years, at least some of these countries to battle it out. The tree and the beaten path process may also be unhelpful in some countries. For instance, in Indonesia, it is ideal to take a cancellation action only after you have filed the trademark application. We then the court even sees that you are an aggrieved party, and you actually have a cause of action against infringing parties. So then the whole prosecution process of the trademark comes into action. So the season and trademark prosecution process is also quite lengthy in some of these functions. But it is a very interesting content for it, especially since that many of you looking at entering Southeast Asia, or a country in Southeast Asia, the manufacturing plant because of what’s happening with the pandemic.

Fred Rocafort 18:48
A lot of what you’re describing reminds me of what it was like to do this kind of work in China, you know, for example, what you were talking about, it being more advisable in some cases, to just Purchase a trademark from the legal registrant, I can certainly relate to that and, you know, you know, when you’re dealing with, say an American or European clients it can can sometimes be very difficult for them to understand you know why they why it is that the smart business decision is for them to pay money to acquire what in their mind is their own property but that’s you know that’s just the reality of working in that market if you if you become a little bit too you know if you’re not willing to see that reality sometimes you just end up hurting your business even more. Of course, as lawyers what we want of course is to try to avoid these problems in the in the first place .Could you share some best practices for for effective IPR protection in Southeast Asia especially with a view to just avoiding problems in the first place some preventive approaches that perhaps could be of use to to foreign businesses in the region

Geetha Kandiah 20:20
Sure, in Southeast Asia easier because it was mentioned that many of these countries for the trademark system is supposed to file And it’s actually a lot easier, quicker and cheaper as well. IP protection in Southeast Asia isn’t very contest. So having their IP protected, as soon as they see Southeast Asia being the potential market for them is very important. Earlier we were talking about how many companies hijack trademarks or do three months working in the easiest way that to actually define that isn’t necessary is registrations or protection is done first. So the first thing would be actually to look at protecting in Southeast Asia. And it’s ironic first, because as you see what’s happening in China and the world, currently, yeah, there’s just many companies already taking that action. We are filing more Iapetus or trademark in Indonesia, in Thailand in Vietnam, especially. And you have rightly pointed it out that Vietnam hasn’t had good GDP for a very long time. It’s one of the emerging countries that has affected development in terms of economy, during that on change with what is happening in terms of COVID-19. But many times, many companies are already aware and I guess it’s India business continuity plan, and their risk mitigation plan to look at Southeast Asia. So we are filing a lot more since before the COVID the other thing to look at is the diversity of languages in Southeast Asian countries, even known as 10 Southeast Asian countries in Southeast Asia, in each country, there are more than one language that is commonly spoken. Let’s say Malaysia and Singapore for instance. There are three main languages in both countries, mostly that English and Chinese and in some minority languages as well in Malaysia. So you can see all this diverse different languages and brand owners should definitely do a linguistic test to ensure that their brands are not vulgar, offensive in the language spoken in that country. Other than that, they might also need to look at should they protect their brand in the local language. For example, in Myanmar registered English version of the brand and the Burmese version of your brand. That’s something pretty much their business team has to decide and speak to local experts in the local intellectual property lawyer, other than that and online protection As we all know, work from home is going to have everyone glued to their laptop or computer. That then just means that exposure online is very, very high. So social media accounts Twitter, LinkedIn, Instagram, Facebook, the local version. The best part of the marketing strategy needs to be set your earlier stage and agreement, local agreements, need to be tightly drawn up and really taking care of their needs. For example, one of the clauses that we highly recommend is having an arbitration clause ensuring that arbitration is other than either done in Malaysia, which has been re established arbitration center for the Asian International Arbitration Center, or in Singapore, which has the WIPO arbitration and mediation center. So that helps businesses,foreign companies, because is not in America or in Europe. Ensure that when disputes arise, they actually have a very good avenue to resolve the dispute with a neutral party. And lastly is ensuring that all counterfeit measures are taken, especially online. This means they’re all online found in Southeast Asia monitor and when there is any sense of infringement as takedown notice. There are strategies in place along those lines. So that’s what I would advise in terms of IP are best practices for any region.

Fred Rocafort 24:33
You bring up an excellent point regarding regarding languages and one thing that I have personally experienced with my own work has been the difficulties that arise sometimes with English marks. I can think specifically of some work that I did for for a client in Thailand through, I was sort of inheriting the default file. So I was sort of stuck with a different law from otherwise. If it had been my own case, I would have worked with you guys from the beginning. But unfortunately, I was I was picking up what someone else started but I do remember, you know, there being decisions, would come up whichfor if it had been a registration in a country where where there were higher levels of English proficiency, a lot of it wouldn’t have come up, I’m sure. But in the specific context of Thailand, there were there were some issues, you know, some some issues involving similarity that now when I get to analyze things more objectively, I realized that in fact, yes, if for a non native speaker, it might not be as easy to recognize that this mark and that mark are actually quite different in a way that that a native speaker or native level speaker would just in the same way that if I was looking at two marks in Thai or Vietnamese, I would probably miss a lot of that nuance. Before we say goodbye. Could you tell us a little bit about what your firm does? Just so people who are looking at doing business in the region might have some some really good questions, just just so they understand a little bit better. What is it that you guys do?

Geetha Kandiah 26:29
Right. So KASS itself has been in the intellectual property field for 21 years. We started out in Malaysia and basically opened an office in Singapore thing that is on the minds of foreign and local companies to protect our intellectual property rights in Singapore. And now we are in Indonesia, in Ghana countries as well as Thailand and Vietnam. Very interesting. We do everything do with intellectual properties, when we look at online. We have a large patent team with three executives who very much specialize in their own field. We have a mechanical engineering, ICT personnel, biotech and chemical graduate, and petrochemical as well in mechanical engineering. In Malaysia, we want to talk one of the larger intellectual property firms that has a in house patant team, you might notice that some people out on the field and talking to other countries. But in Malaysia, we don’t, we have the team internally on that end we give very high level advice, top quality advice and everything is done with double checking system that’s for patent team. for the treatment team, also very large population standards. And so the headquarters in Malaysia we pretty much do anything to do with intellectual property and this includes a vehement related to utilization of intellectual property rights. Monetization of intellectural property right. So we look at Joint Venture agreements, technology transfer agreements, valuation, Intellectual Property Valuation, we also look at franchising. We advise quite heavily in franchising in Asia in Southeast Asia as well. And then the support counter when it comes to litigation for dispute resolution, we ourselves don’t go to court, but we are we provide litigation support, we work with a client emerge from end to end from ideation from them coming up with ideas to them, commercializing it, and then handling the dispute. And

Geetha Kandiah 28:38
your company.

Fred Rocafort 28:42
Well, Geetha, this has been a fantastic conversation and certainly a very informative one. Even for someone like me, who’s who’s actually spent quite a bit of time in the region. So I’d like to thank you for for your time and before before we left Go, you know, in addition to the information and knowledge that we’re trying to present, through our conversations, we also like to take a step further and share with with our listeners. Things that we’re reading and listening to that are helping us better understand the world. So on that note, I’d like to ask you, What are you reading?

Geetha Kandiah 29:30
Sure. I do like reading, you know, novels and interesting pieces, which is the recent one being Daniel Pink. I’m not sure whether you’ve read it is a Whole New Mind. Completely amazing book. And a Whole New Mind was very interesting, in the sense that it was really much before the COVID started, and I think plays a big part now itself. He talks about why right brainers rule the world. So, in Daniel Pink’s book, A Whole New Mind Asia was very much in abundance and everything was outsourced to Asia. And that was when the Western countries being America and Europe had to differentiate themselves. It’s kind of a we do everything quick. And we do everything fast because everything was outsourced to Asia. But he does go into life about how it’s not just about logical thinking and analytical thinking anymore. It’s going to be about right brain thinking, the right type of branding exercise, to stand out among your clients to stand out among the community to stand out in your industry in general. So you can talk about anything you do, you need to have a design profit out neither story, cross it out. You need to have empathy and EQ all of your messages. And that when you actually stand out. And of course, during both things, examples of companies that have done it talks about Apple or how we tell the story behind behind the iPads and phones, probably behind the iPod can be tweaked here and there and the design behind it as well. Not so much the function of the product, but the right brain skill. So that’s extremely good. Highly recommended if you haven’t read it, and I really enjoyed that one.

Fred Rocafort 31:29
Thank you for that recommendation. We’ll certainly be providing a link to that when we publish this podcast. I just like to mention one book that I’m reading at the moment. It’s called Into the Raging Sea, written by Rachel Slade, and superficially at least the the book that describes an incident that happened a few years ago when a cargo ship that was traveling from Jacksonville to Puerto Rico basically sank because of a hurricane. The book really is about a lot more than that it helps to explain the somewhat tenuous economic links that keep the world running and how economic imperatives can sometimes lead to, to companies taking excessive risks that that end up as they did in, in this case with considerable amount of human life loss and obviously, the loss of the of the vessel on the cargo. So, if you’re looking for something a little different, most of what we mentioned here has to do with politics and, and laws. This is slightly different, but there’s definitely some connections there. as well. On that note, Geetha I’d like to, once again, thank you for for your time. It’s been great having you on. We certainly look forward to a repeat and we also look forward talking to some of your colleagues at some point as we focus perhaps on on some countries specifically. So so thank you once again.

Geetha Kandiah 33:12
Thank you all for it. Thank you very much.

Fred Rocafort 33:20
We hope you enjoyed this week’s episode. We look forward to connecting with you on social media to discuss developments in global law and business and tune in next week for another episode. We’ll see you then.

Transcribed by https://otter.ai

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About This Podcast

Every week, we take a bite-sized look at legal and economic developments in locales around the world as we try to decipher global trends in law and business with the help of our international guests. No topic is too big, too small, too simple, or too complicated. We plan to cover continents, countries, regimes, governance, finances, legal developments, and whatever is trending on Twitter.