- Background
A Swedish start-up producing a new sparkling tea in cans with various flavours attended a trade fair in November 2024 in Singapore, where many visitors showed interest in their products. A discussion was initiated between the SEA IP SME Helpdesk (SEA HD) and the founder about IP protection measures for her products in South-East Asian countries, with an initial focus on Singapore. A follow-up email containing recommendations for protecting several IP rights (IPR) was sent to her, and six months later, she contacted the IPBA to further discuss the trademark protection strategy.
- IP issues raised
After getting a first round of advice on various IP topics to be considered for her products while expanding to SEA, she initially expressed interest in starting with trademark protection, notably by asking about the best protection she could plan for her brand in Singapore. She also requested further recommendations for protecting her assets in SEA, as she was also worried following the receipt of a C&D letter from a law firm.
- Results & actions taken
As highlighted to the founder, an important rule in the F&B sector is that a trademark often represents the core value of a product. It is key to understand the importance of the territoriality principle which applies to trademarks as a trademark is protected only within the territory (country or region) where it has been registered. The founder would then need to protect first the trademark in Sweden or the EU (where the products are developed and sold), but also in Singapore (where she found several interested distributors).
Regarding trademark protection in Singapore (or at a later stage within SEA), the founder was informed of the existence of two options: the national route (filing directly with the Singapore IP office) and the international route (via the Madrid system at WIPO). Each system has pros and cons; the founder would need to carefully consider the situation. As she was planning to first file a trademark application in Europe, the IPBA shared an overview of the application procedure for the international route, i.e. the need for a trademark basis, the role of WIPO, and how to use its online platform, the deadlines, and requirements.
Furthermore, the IPBA recommended that the company conduct a prior rights search before filing any trademark application in any given country or territory. This mandatory step would help to identify existing trademarks, domain names, or company names that may conflict with her future trademark. The founder would need to contact a local IP lawyer to help her with this task.
Apart from trademark protection, other assets would need to be included in the IP protection strategy.
- First, design protection for any new type of container or packaging which may be developed, as existing elements had already been disclosed more than one year ago (as for patents, the novelty requirement is quite strict for securing this right).
- Second, copyright protection should be actively considered for any original creation bearing in mind the automatic protection granted by the Berne Convention (applicable within the EU and most countries of SEA) but also the option of local registration (although not applicable in Singapore) which could be valuable in case of litigation or for any enforcement action (most frequently for customs or e-commerce platforms).
- Third, choosing wisely between design and copyright protection, as it is not always possible to seek combined protection (i.e. like Vietnam, Thailand, and Indonesia).
- Fourth, the IPBA introduced the concept of trade secrets as a valuable form of IP protection for confidential business information (i.e. recipes and manufacturing processes). To this end, several internal measures should be applied, and the extensive use of non-disclosure agreements (NDA) should be the rule from now on.
- Fifth, attention was also drawn to the importance of domain names. The IPBA explained that foreign companies usually do not take the time to reserve local domain names, which are then reserved by third parties and create difficult issues for the official brand and owner (i.e. risks of brand dilution, market diversion, confusion for the consumer and challenges to retrieve a local domain name).
At a later stage, the founder also shared concerns over a Cease & Desist (C&D) letter she received after filing a trademark application and through which she was asked to withdraw her application. Reviewing the claims from the other party (prior rights over a similar trademark), the IPBA outlined necessary concepts to analyse the situation, including the distinctive character and the specialty principle of trademarks, the likelihood of confusion between trademarks, and the steps of an opposition procedure. The founder was relieved to hear that discussions through lawyers may be the best option to avoid a deterioration of the situation, and that securing an amicable settlement could not be out of reach (i.e. via a letter of undertaking or a letter of coexistence could help in this type of situation)
Following the consultation with the IPBA, the founder contacted several IP lawyers to first prepare a response to the C&D letter and then to launch a more robust trademark protection strategy covering the EU and Singapore.
- Lessons Learnt
- A proactive IP strategy is crucial, particularly for start-ups and companies with products that resonate strongly with customers. This also allows the company to effectively defend its rights, minimise disputes, and enter new markets with confidence and brand integrity.
- Absence of IP registration may lead to serious legal, financial, and reputational consequences. Without registered rights, it becomes difficult to enforce IPR, prevent infringement, or take effective legal action. IP registration should not be viewed as optional, but as a foundational element of business risk management.
- A robust trade secret strategy should always be considered alongside other IP protection measures to ensure comprehensive coverage of a company’s valuable assets. In case of a breach, rapid and coordinated action is essential to minimise the damage (i.e. leak of recipes for new sparkling teas to be publicly launched).
- Many European SMEs underestimate the importance of trademark protection beyond their home country. A common mistake is assuming that registration in one jurisdiction (e.g., a European country or the EU) is sufficient. As trademarks are territorial, failing to register in key target markets can lead to loss of exclusive rights or costly legal battles. Businesses should always include trademark registration as part of their market-entry strategy.
It is crucial to conduct a thorough legal assessment before responding to a C&D letter concerning a trademark. It helps to keep track of important relevant deadlines, understand the chance of success, select the best response strategy (defensive or aggressive) and prepare negotiations for reaching an amicable settlement.