by
Well,
Fabrice Mattei, and his law firm Rouse & Co. International can definitely
help.
Fabrice,
a Corsican native, first came to Thailand in 1994 representing the UK firm of
Middleton Potts to do an audit for a major UK pharmaceutical company on
intellectual property (IP) in the Asian region. He recalls, “We looked at the
protection of IP rights, and tried to find solutions for the exploitation of the
patents and trademarks. At the same time, we attempted to set up something that
would prevent the occurrence of infringing drugs on the market.”
Fabrice has a great background in intellectual property and unfair competition law. Besides Middleton Potts, he has also worked for Donne Mileham & Haddock in the UK and the firm of INLEX Conseil in Paris. He has a Master’s Degree in International & Intellectual Property Law (L.L.M.), and a D.E.S.S. in Intellectual Property and Unfair Compensation Law from the University of Paris as well as a Master Degree in Intellectual Property Law and Science from Queen Mary & Westfield College at the University of London. And he is currently working on his PhD in IP Law for which his thesis is “The TRIPs agreement and anti-counterfeiting in Asia.”
After
his initial stint in Thailand he returned to Europe realizing the potential for
intellectual property work in Asia in terms of the protection, exploitation and
enforcement of rights. He talked it over with his colleagues and they all agreed
that Asia was the “future for IP lawyers.”
So
he came back to Thailand in 1996 and set up the intellectual property department
of the Thai law firm, Mongkolnavin, whose Managing Director, Professor Dr. Ukrit
Mongkolvanin is the former President of the Thai Parliament as well as the
former Dean of the Faculty of Law for both Thammasat and Chulalongkorn
Universities. Mongkolvanin is a foremost expert in Thai law and this helped
Fabrice tremendously when he first got going.
While at Mongkolnavin, Fabrice was honored and delighted to have been involved in seminars for Princess Patcharakittiyapa on intellectual property during her training program as a lawyer. He says, “Her majesty is such a nice person, and was very interested in learning more on the recent changes in intellectual property laws occurring in Thailand as well as in the comparison between counterfeit and genuine goods and how we distinguished between them. It’s so important having someone in her position understand the scope of this problem here in Thailand.”
But
why did Fabrice choose to study intellectual property law in the first place?
“I wanted to study something that would link law and something else and
that’s why intellectual property was so fascinating: with patents you combine
law and science; with copyrights you combine law and art; and with trademarks
you combine law and marketing.”
Fabrice’s
law firm, Rouse & Co. International was set up 12 years ago by a British
lawyer named Peter Rouse, who had helped set up Baker MacKenzie’s offices in
Singapore and Jakarta before returning to the UK to establish his own firm. The
firm now has offices in Miami, London, Oxford, Dubai, New Delhi, Jakarta, Ho Chi
Minh City, Shanghai, Guangzhou, Beijing, Hong Kong, Bangkok and Kuala Lumpur.
Rouse
& Co. International’s services and legal expertise address all
intellectual property matters, particularly patents, trademarks and domain
names, industrial designs, copyrights, trade secrets, legal protection of plants
and seeds, due diligence and the transfer of intellectual property rights. As
advisors, Rouse & Co. International works in tandem with its clients from
the beginning of the case through to the follow-up of each mandate.
What
sets Rouse & Co. International apart from its competitors is that it employs
lawyers, trademark and patent attorneys, engineers and professional
investigators. And its investigators, a mix of Thai and farangs, only look into
intellectual property rights violations, nothing else. Rouse has a regional
training base for these investigators in Dubai where they attend a number of
seminars run by the world’s finest sleuths.
“We have litigators, trademark and patent agents, engineers and investigators anchored by a competent and dynamic staff, all working within one law firm, and everyone adds value to our business. For instance, the investigator can find evidence that is very useful for the litigators to use in court, then the litigators can come back from court and have useful information to share with the investigators, and the trademark and patent agents can find information about feeders and pass that on to our litigators and investigators.”
It’s
essential that Rouse’s investigators and litigators are familiar with the
networks of ‘transnational feeders,’ or companies that produce counterfeit
goods in one country, say China, and then export them to an intermediate
country, say Thailand, before then exporting them to another, say Belgium.
“Some of our clients also require that our team get special training in the types of products we are investigating and enforcing, and how to recognize them from copies so they will send a team here to demonstrate their products, explain the nature of the problem they are facing and the type of feeders involved.”
Given
the amount of money involved, it can be a risky to investigate and then take
action against counterfeiters but Fabrice explains, “We have a large team of
investigators so we never place one person in too much danger for any length of
time. For example, we don’t make them go on repeat visits to an area they are
investigating. We also separate the investigations from the enforcement, or in
other words, those carrying out the investigation never have to conduct the
seizures or police raids. Once we know where the factory is, and have
ascertained that it manufactures or contains counterfeit goods, then the police,
accompanied by our lawyers, conduct the seizures and file legal actions.”
How
has Thailand developed in the protection of intellectual property?
“In 1997 Thailand established the Central Intellectual Property and
International Trade Court (CIPITC) and this special court has put lots of
pressure on other Thai authorities like the police and customs to look at the
counterfeiting problem as a crime.
“The
new court also has the advantage of looking at intellectual property
infringement as a crime and as an international and economical issue, not just a
local or isolated problem. And that’s great progress from the past.”
And
it’s not just clothes, perfume and handbags that Rouse & Co. International
focuses on, it also looks out for fake power tools, jeans, foods, electronic
devices, pharmaceutical products, automotive spare parts and lubricants. Rouse
& Co. International doesn’t target street vendors, but concentrates on the
main producers instead.
But
are these counterfeiters being jailed for these violations, and if so, for how
long?
“Yes, and the length of the sentence depends generally on the quantities
seized as well as the risk of danger to the public. More often than not those
doing jail time for these crimes tend to those who were manufacturing
counterfeit CDs, because the numbers seized were so massive.
“The
maximum penalty for copyright violations is THB800,000 with a maximum four year
prison sentence and THB400,000 for trademark and patent infringements with a
maximum two year prison sentence. An example of how enforcement is progressing
is a while ago a person caught with 1200 fake T-shirts was fined US$ 4,000, and
that is quite high compared to the penalty he would have received a few years
ago, before the opening of the new Intellectual Property Court.”
Over
the years, the challenges presented by new and emerging technologies have driven
the evolution of Rouse & Co. International. From chemistry, electronics,
mechanical and electrical engineering to biotechnology and pharmaceuticals,
genetic engineering, computer technology, the firm continuously redefines its
expertise to meet these challenges. For instance, the firm represents various
biotech companies in the registration and prosecution of their patents in
different fields such as bio-agronomy, cell transportation, molecular
diagnostic, and transcription factors.
The
firm is also particularly active in canceling unlawful trademarks and patents
and contributing to the development of Thai case law on intellectual property.
An example of this is a recent case, which has resulted in one of the most
important decisions to be handed down by the Central Intellectual Property and
International Trade Court of Thailand.
Kipling AG (“Kipling”), a Switzerland-based company, the Plaintiff in this case, was the owner of the KIPLING brand, one of the fastest growing accessories and clothing brands in Europe and elsewhere. It first registered the KIPLING mark (the word KIPLING with the device of a long tail monkey) in Belgium in 1987 in many classes, including in respect of all goods in classes 18 and 25 for bags and clothing.
Then
in 1997, Kipling began exporting and distributing bags and accessories under the
KIPLING brand in Thailand. At that time, it discovered that a Thai citizen had,
in the early 90s, registered the KIPLING name and monkey device in class 25 and
begun using the brand on bags and clothing. In October 2000, goods bearing the
defendant’s mark were seized and a criminal complaint filed against the Thai
citizen.
In
a landmark decision, The Supreme Court of Thailand recently condemned the Thai
citizen for passing off Kipling’s brand. This decision is an important one for
foreign brand owners doing business in Thailand. It shows that trademarks that
have only been registered outside Thailand may still provide the basis for a
successful action under the Criminal Code, even where the same mark has been
registered by a third party in Thailand in relation to a different class of
goods.
What
about the process itself, how does someone get Rouse & Co. International to
protect its patents or trademarks?
“We first start by meeting our clients and providing them with our opinion
regarding the patentability of their inventions or the registrability of their
trademarks. We generally recommend conducting preliminary searches relative to
the contemplated patents, trademarks or copyrights. Based on our search results,
we then decide whether to proceed with the filing and prosecution of the marks
or patents and, if necessary, advise our clients on alternative modes of
protection. We then, elaborate, develop and implement strategic investigation
and enforcement programs relative to the patents, trademarks or copyrights we
have protected. This process is anchored by our competent and dynamic
information technology staff and supported by our in-house developed software
Dathaibase ™, Enforceplus
™, Archivuse ™ & Oppovision ™.”
Fabrice also says you should never disclose any invention to others before securing rights with filing of a patent application and/or entering into a confidentiality agreement with the person to whom the invention is, in part or in full, disclosed.
What
can the individual consumer be on the look out for when trying to avoid
counterfeit items while shopping?
“Things to watch for are first of all the price (a brand name being much
cheaper than it should be); then look at the presentation of the product, is it
in packaging or just on display? Third, can you negotiate the price (you
shouldn’t be able to for the legitimate product)? Fourth, is there a warranty
card? And last take note of the appearance of the shop or where the product is
being sold.”
Rouse
& Co. International is definitely a good choice if you need to protect an
idea, product, process, brand or image and their integrity in the global
marketplace. The staff is friendly and helpful, and one thing is for sure: it
won’t give you any counterfeit or misleading service. Services are provided in
Thai, English, French, German and Italian.
Fax:
02-653-2734
E-Mail:
fabrice@iprights.com
Website: www.iprights.com
FINIS
