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Sunday, May 25, 2014

Industrial design rights in SE Asia

Design rights around SE Asia vary tremendously, as a presentation last week at the  Institute of Patent and Trade Mark Attorneys of Australia’s conference revealed.

The test for design rights seems to vary around the region in many ways. Eye appeal, or aesthetic value is applied differently for example. Copyright and designs are in some countries mutually exclusive (e.g. Singapore), in others they can coexist (e.g. Philippines), in some countries copyright for unregistered designs can be lost once industrially applied (e.g. Singapore).  There is also variation as to whether a component of a larger article attracts its own design protection, such as body parts for cars, (in Singapore not, in Thailand it can).

Litigation cases in the different countries can lead to very different results. Practice and the written law can even vary, e.g. Indonesian courts upheld a design registration that was apparently functional even though the law requires "aesthetic impression".  The common law countries have groundless threats provisions, whereas the civil ones tend not to, making assertions of infringement easier in say Indonesia than Singapore.   There is a wide discrepancy in experience too – some countries for costs reasons have very few designs registered.  In these countries, copyright protection as a fallback becomes important to deal with imitations in the absence of industrial design registrations.   

With the ASEAN Economic Community next year, there is a proposal that many ASEAN countries join the Hague Convention.  While this may bring more consistency to registration, assuming a number of countries join (not all are expected to), enforceability may well remain divergent.

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