Anticipating Trade Mark Issues In Southeast Asia

A Guide to Combating Brand Squatters

This is the second article in our new series, a guide to combating brand squatters.

Introduction

The rapid expansion of Chinese brands into Southeast Asia has created both opportunities and challenges for trade mark protection in the region. As reported in the Business Times on July 21, 2025, 'Chinese brands are piling into Southeast Asia,' companies seek to capitalize on the region's growing consumer markets and expanding middle class. This influx of international brands, combined with the region's diverse legal frameworks and varying levels of intellectual property enforcement, has created a fertile ground for trade mark squatters and brand infringement issues.

The article highlights how Chinese companies are 'accelerating their expansion plans' across Southeast Asian markets, driven by factors including favorable trade relationships, growing digital infrastructure, and rising consumer spending power. Unfortunately, this expansion has also attracted opportunistic trade mark squatters who register well-known brand names before the legitimate owners can establish their presence in these markets.

For businesses entering Southeast Asia, understanding the trade mark landscape and implementing proactive protection strategies are crucial. The region's 'first-to-file' systems in most jurisdictions mean that speed and strategic planning are essential to prevent costly legal battles and brand dilution. This guide examines the specific trade mark challenges and protection strategies for five key Southeast Asian markets: Indonesia, Thailand, Vietnam, Philippines, and Cambodia.

Indonesia

Trade mark Framework

Indonesia operates under a 'first-to-file' system governed by Law No. 20 of 2016 concerning Trade Marks and Geographical Indications. The Directorate General of Intellectual Property (DGIP) oversees trade mark registration, which typically takes 12-18 months to complete.

Common Squatting Tactics

Trade mark squatters in Indonesia often employ sophisticated strategies, including:

• Mass registration schemes: Registering hundreds of foreign brand names across multiple classes
• Local adaptation: Slight modifications to famous marks to avoid immediate detection
• Class clustering: Registering in related but non-core business categories to create enforcement difficulties

Protection Strategies

• Comprehensive filing: Register trade marks across all relevant classes, including defensive registrations in related categories
• Local partnerships: Work with established Indonesian distributors who can provide market intelligence and early warning systems
• Regular monitoring: Implement systematic watch services to detect trade mark filing by squatters in order to file timely oppositions
• Well-known mark claims: Build evidence of international recognition to support well-known trade mark claims under Indonesian law
• Negotiate before litigation- consider covert approach to acquire from squatter before court cancellations

Enforcement Considerations

Indonesian courts have become more receptive to well-known trade mark claims, but enforcement remains challenging. Criminal enforcement through the IP Office (DGIP) or the police can be more effective than civil litigation for clear-cut cases of counterfeiting.

Thailand

Trade mark Framework

Thailand's trade mark system is governed by the Trade mark Act B.E. 2534 (1991), with recent amendments strengthening protection for well-known marks. The Department of Intellectual Property (DIP) usually examines applications within 8 months after filing, with registration typically taking 12-24 months.

Common Squatting Tactics

Thai trade mark squatters often focus on:

• Phonetic similarities: Registering marks that sound similar to famous brands in Thai pronunciation
• Script variations: Using different scripts (Thai vs. Roman characters) to register similar marks
• Sector jumping: Registering famous marks in unrelated industries, goods or services, with plans to expand or sell

Protection Strategies

• Multi-script registration: File applications in both Thai script and Roman characters, especially if the Thai script is used for local marketing purposes
• Service mark protection: Don't overlook service mark registrations, even when the mark is used only for goods. While many squatters focus on goods classifications, some file for services opportunistically.
• Madrid Protocol utilization: Thailand's participation in the Madrid Protocol offers streamlined international filing

Enforcement Considerations

Thailand has specialized IP courts with experienced judges who have an IP background. These judges tend to take a wholistic approach by considering both the circumstances of the case and the infringer's bad-faith intent when handling infringement cases. In trade mark squatting cases, the court are generally willing to consider factors such as public deception, the commercial history of the parties, and patterns of squatting registration that help establish malicious intent. This approach makes litigation outcomes more predictable, particularly where public deception and malicious intent are evident.

Vietnam

Trade mark Framework

Vietnam's trade mark law is governed by the Law on Intellectual Property 2005, with significant amendments in 2009, 2019 and 2022. The Intellectual Property Office of Vietnam (IP Vietnam) handles registrations, which typically take 18-22 months.

Common Squatting Tactics

Trade mark squatters in Vietnam employ various strategies:

• Corporate name registration: Registering company name of foreign companies/ brands as trade marks in Vietnam.
• Early filling and leveraging class clustering: Registering foreign brands that have not been registered in Vietnam or for related classes to avoid inspection.
• Local adaptation: Slight modifications to famous marks to avoid immediate detection

Protection Strategies

• Early filing: Vietnam's strict first-to-file system makes early registration critical
• Comprehensive search: Conduct thorough searches including Vietnamese-language variations
• Anti-counterfeiting measures: Implement comprehensive anti-counterfeiting and enforcement programs given Vietnam's manufacturing focus
• Business name search: Search the Business Registry Database for similar company names.

Enforcement Considerations

Vietnam has made significant improvements in IP enforcement, with specialized courts and enhanced customs procedures. However, administrative enforcement through market management agencies should be more accessible.

Philippines

Trade mark Framework

The Philippines operates under the Intellectual Property Code of the Philippines (Republic Act No. 8293), which created the Intellectual Property Office of the Philippines (IPOPHL). The registration process typically takes 12-18 months.

Common Squatting Tactics

Trade mark squatters in the Philippines often employ:

• Corporate name registration: Using Securities and Exchange Commission (SEC) corporate name registration to block trade mark applications or ride on the goodwill of registered trade marks
• Business name registration with the Department of Trade and Industry (DTI) for sole proprietorships: Local-level business registrations to establish prior use claims
• Family name claims: Claiming surnames as trade marks to block foreign brand registration

Protection Strategies

• Comprehensive due diligence: Check not only trade mark databases but also SEC corporate name and DTI business name records
• Use-based claims: Build evidence of use in commerce to overcome first-to-file challenges
• Opposition proceedings: Actively oppose suspicious trade mark applications during the publication period
• Domain name protection: Secure relevant .ph domain names as supporting evidence

Enforcement Considerations

The Philippines has established specialized commercial courts for IP cases which may issue search warrants that are enforceable nationwide. In addition, IPOPHL has implemented streamlined opposition and cancellation procedures. Customs enforcement is also available for registered marks.

Cambodia

Trade mark Framework

Cambodia's trade mark system is governed by the Law on Marks, Trade Names and Acts of Unfair Competition (2002), administered by the Department of Intellectual Property Rights (DIPR). A straightforward registration typically takes 9-12 months, making it one of the faster systems in the region.

Common Squatting Tactics

Trade mark squatters in Cambodia often focus on:

• Volume registration: Taking advantage of relatively low fees to register multiple foreign brands
• Cross-border coordination: Working with squatters in neighboring countries to create regional blocking strategies
• Timing exploitation: Monitoring international brand announcements to pre-emptively register in Cambodia

Protection Strategies

• Rapid response: Cambodia's faster registration system allows for quick defensive filings
• Regional coordination: Coordinate Cambodian filings with broader Southeast Asian trade mark strategies
• Local market assessment: Evaluate whether Cambodia represents a significant market risk or entry point
• Cost-benefit analysis: Balance registration costs against potential market importance

Enforcement Considerations

Cambodia's IP enforcement mechanisms are still developing, but the country has progressed in establishing specialized procedures. Border enforcement through customs is currently limited but improving.

Regional Best Practices

Proactive Strategies

1. Unified regional approach: Develop comprehensive trade mark strategies that consider all target Southeast Asian markets simultaneously

2. Cultural sensitivity: Understand local naming conventions and cultural considerations that might affect trade mark protection

Crisis Management

1. Rapid response protocols: Establish procedures for quick action when trade mark squatting is detected

2. Settlement considerations: Evaluate when settlement might be more cost-effective than litigation

3. Public relations management: Prepare communication strategies for high-profile trade mark disputes

Conclusion

As Chinese brands and other international companies continue their expansion into Southeast Asia, trade mark protection has become more critical than ever. The region's diverse legal frameworks, combined with sophisticated trade mark squatting schemes, require businesses to adopt comprehensive, proactive protection strategies.

Success in combating trade mark squatters requires understanding each country's unique legal framework, implementing early-warning systems, and developing rapid response capabilities. Companies that invest in proper trade mark protection strategies from the outset of their Southeast Asian expansion will be better-positioned to protect their valuable brand assets and avoid costly disputes.

The key to success lies in treating trade mark protection not as a compliance afterthought, but as a strategic business imperative integral to successful market entry and expansion in Southeast Asia. With proper planning, local expertise, and proactive monitoring, businesses can effectively navigate the complex trade mark landscape and protect their brands in these dynamic and growing markets.

Authors:

Indonesia – Kin Wah Chow,Evi Triana

Vietnam - Khanh Nguyen, Anh Pham, My Anh Truong

Thailand - Oat (Norasak) Sinhaseni, Ning (Nontaya) Chulajata

Philippines - Edmund J. Baranda

Cambodia - Monyrak Phang

Related articles:

Rouse - Understanding the ASEAN Manufacturing Landscape