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Case study 61: Spanish manufacturer of furniture – protection of designs in Vietnam and Singapore via a local IPR protection strategy

  1. Background 

After attending a webinar organised in Spanish by the SEA IP SME Helpdesk (SEA HD) and ICEX (the Spanish Institute for Foreign Trade) on 18 September 2024, which covered the topic ‘Protecting and defending your IP rights in SEA’, a Spanish SME contacted the SEA HD to discuss several IP issues.

This company is a manufacturer of outdoor and indoor furniture already selling and distributing its products in two countries of SEA (Vietnam and Singapore).

The request for support was initiated using the 1 to 1 consultation booking platform (as a link to this service was shared during the webinar) and the virtual meeting took place on 30 September 2024 with the IP Business Advisor (IPBA).

  1. IP issues raised

During the online consultation, the SME explained that they used to hold registered IP rights (IPR) for some of their furniture designs, notably covering the EU market. They wanted to know if these rights could also protect them in SEA (for example, in case of IP infringement in Vietnam or Singapore) and if there were any further protective steps to take locally.

Following the discussion, a follow-up email was sent, comprising a recap of the main points of discussion and key links.

  Support and advice provided by the SEA HD 

  • First, the IPBA had to explain a key IP principle (territoriality of IPR), informing the company that rights registered in the EU would be of little use for countries outside of this region (i.e. Singapore and Vietnam).
  • Secondly, the IPBA reminded the entrepreneur of the existence of different IPR types and the aim of protection behind each one. He took the time to explain that the rights protected in the EU should not be called ‘patents’ but ‘industrial designs’ instead.
  • As far as the protection of designs in SEA, the IPBA highlighted the existence of two IPR categories: copyright and industrial designs. Requirements, costs, and proceedings were explained in detail for Singapore and Vietnam.
  • The IPBA added that design protection is similar to patent protection, as a requirement of novelty is strictly required when filing an application. As a result, this would mean that any design already disclosed or protected in the past could not be protected anymore by such IPR. Nevertheless, this IPR should be kept in mind for all future designs of the SME that have not yet been disclosed.
  • Trying to give tips for alternative protection means, the IPBA also shared information on copyright protection (option of local registration in Vietnam, importance of collecting evidence of ownership and creation of any work).
  • Finally, the IPBA shared practical advice regarding IP protection strategy as the SME was asking about the best timing to protect IPR in a new market.
  1. Result 
  • IP awareness and knowledge both increased for the Spanish SME, enabling the contact to disseminate key information among her colleagues. 
  • Following the consultation, the creation processes of new furniture designs would also be reviewed and adapted (notably by checking IP clauses in labour contracts and by setting up new processes to safeguard evidence of ownership).
  • Following the IPBA’s suggestion, the SME would consider applying for design and copyright protection for future new creations, depending on the available budget and the MarCom strategy. 
  1. Lessons learnt 
  • IP knowledge and protective measures taken in due time are key for an EU SME in its internationalisation phase.
  • Each SME has different types of assets, and there are different IPRs to protect each of them. The key is to understand the aim of protection of each IPR, as well as its strengths and limits.
  • A patent and an industrial design are very different, each one may protect a separate element of a product (purely technical features or aesthetics).
  • Adapt the IP protection strategy depending on the country of interest and the available budget. 
  • Novelty is a very strict requirement for both patent and industrial design protection. Once a design or product is publicly released, the chances to obtain protection are quite low (unless several exceptions for disclosure are met).