IP Engagement Strategies for Investing in Asia

In Depth

IP Engagement Strategies for Investing in Asia

Nick Redfearn | May 2013

IP holders, who are planning their IP strategies in Asia, talk a lot about their IP registration strategy, concerning the marks to be registered, the specifications or dealing with oppositions. They plan an enforcement strategy by teeing up investigators and making raid plans. Or they work out their licensing strategy to commercialise their IP. This is often done in a vacuum without considering how they should be interacting with the IP system to benefit themselves most. Each country differs and so the approach should too.

IP engagement is a means of furthering your IP goals in a far more holistic way. In countries where a company plans only a minor level of sales or marketing, it may not justify detailed attention. However, major markets like China, India or increasingly Indonesia do. Markets with substantial manufacturing or R&D investment will justify more attention. Where Asian companies are stretching their businesses into new markets around the region, this same process will avoid many problems.

Since Asian countries are at varying levels of development, investing IP holders do not always face a completely level playing field. Asia’s IP systems vary wildly from extremely balanced and efficient like Hong Kong, to barely functioning like Myanmar. Good planning avoids difficult situations and expensive problems. Examples might be uncooperative enforcement authorities, a spiralling trademark piracy problem or local perceptions of technological exploitation and overly aggressive license fee extraction.

An IP engagement strategy for a company investigating in Asia could contain many components. The level of customer service from IP systems in Asia varies greatly. At one end of the spectrum, it might be Singapore where there is an autonomous IP office with a great deal of focus on customer interaction and stakeholder engagement. At the other end, it might be Indonesia where the IP authorities hardly every listen to IP holders and build IP systems almost in isolation from commercial reality. However, IP engagement is still vital and so some components might be the following:

Decide what your relationship with the local IP Office (IPO) should be. Many IPOs in Asia are still developing and value close cooperation with IP holders. Joining training seminars, sponsoring events, especially the common World IP day activities on every April could promote your business to the IP office and ease you entry into the country’s IP registration system. Working out the best way to achieve well known mark status will often involve talking to the IPO for example.
Enforcement always needs a level of active engagement and understanding of local complexities. Are you going to turn up at a China prosecutors’ office to file a criminal complaint and then complain when they send you to the AIC, or should you gain a full understanding of which departments do which work and why in advance?
Customs training is a common way to promote your brands to customs and aid customs in their work intercepting fakes. They tend focus on those brands, which they know well and joining customs training programmes help to promote your brands to customs. Based on seizures analysis, you can target specific ports most relevant to your industry to train too.
IP is never the responsibility of one department. Surely the IPO is responsible for registration, but anti-counterfeiting might fall under the criminal authorities or Ministry of Justice, the civil courts under a Supreme Court, customs under the Ministry of Finance, R&D development under a Science and Technology Ministry and so on. Identify what are the key issues for your business and then find the right ministries and departments for whom you will need support in your IP work, then go to see them. Many countries have a coordinating committee, which is a great entry point into the whole IP system.
National IP policies usually identify key policy areas where the government will focus its resources. Is your industry important to the government and if so why? Not every country has one, but where they do, these will give you a lot of clues on how to plan your IP strategy and align it to your host nation’s goals. That will make your IP journey a great deal easier.
International organisations such as the International Trademarks Association and the IP Owners’ Association have various committees and sections devoted to Asia. However, there are also local organisations in each country to help you through the learning curve, through which you can find out more, share experiences and so on. In a major investment destination, this is crucial. Perhaps the most well-known local IP organisation anywhere is the QBPC in China, which has extremely wide membership across numerous industries, even industry focused sections such as apparel, pharma etc.
Manufacturing in a country makes for a different level of investment. It also brings you into contact with the local government. Use those contacts to generate support through your investment, in case you need it to help your IP goals. In some markets, you can take this a step further. Working with local universities and research institutions on joint R&D projects is a superb way to generate local support. This is all the more so in centrally planned economies like China or Vietnam, where such bodies are likely government owned and therefore you are in effect working on R&D with the government.
Lastly, understanding the levels of an impact of corruption in Asia’s developing markets is critical. Some horror stories include investigators who place trap buys to boost the seizure size, and thereby increase the demand for fakes, patent examiners who demand a success fee for granting your patent. In each market, these issues must be understood and risks weighed.

Companies with investment plans should put in place a clear set of objectives what they expect to achieve in a market with their IP programme. Considerable pitfalls can be avoided by working out how to execute IP protection plans, whom to talk to and where the best places to generate support are. Those who treat countries as identical to their home, will run into difficulties.