How long have you been with Sweetyet Development Limited? What does your company do?
I have been with the SDL Group since 2011, so about three years now. I previously worked for a large law firm in the Philippines, before I moved to Hong Kong in 2011.
The SDL Group of Companies specializes in trading, licensing and distribution of consumer products. It has operations worldwide, with its headquarters in Hong Kong and affiliate offices in Singapore, Malaysia, Thailand, Indonesia, China, Australia, India, the United Arab Emirates, Cyprus and the Netherlands.
Sweetyet Development has also started to develop its own products branded under trademarks that it has purchased from a large multinational consumer goods company in the past eight years or so. One of them is MAZOLA, a brand of edible oil and other food products in Asia-Pacific and other regions. Another one is DENIM, our line of personal care products. DENIM is a worldwide brand, except for Europe and India. We also have ASEPSO, a soap brand that can be found worldwide.
How big is your team?
For trademark prosecution and registration, there are two of us on the team—me and a registration assistant, both based in Hong Kong. For brand protection and border protection matters, there are three people, including me, a person based in our Netherlands office and a person based in South Africa.
You have a relatively small team for dealing with so many different jurisdictions. Do you rely a lot on outside counsel and service providers?
Yes, we rely a lot on outside counsel, but we also have a small portfolio, so the workload is reasonable. We also use trademark service providers for our trademark watches and searches, which we do in-house.
What are your responsibilities?
I manage the IP portfolio of the company worldwide, as well as everything to do with IP matters, such as infringement, border protection and brand protection. I am also responsible for the review and negotiation of contracts, for the product registration of our distributed products worldwide, as well as most other general legal matters.
Are there any countries where there have been particular problems?
We have had some issues in China, where our trademark ASEPSO was registered by a local company without our consent. Eventually we were able to obtain our ASEPSO mark through negotiations.
We are also currently having issues with registering our products in India and China, as the documentation required for product registration changes all the time!
What are the biggest trademark-related challenges that you face? How do you deal with them?
One notable challenge to mention may be the fight against gray market goods, sometimes referred to as parallel goods. This is an important issue for us since our company is in the business of distribution of goods. We just remain vigilant in our border protection measures.
When I say parallel goods, I don't refer to parallel imports or gray market goods per se, but actually goods that may be considered infringing goods. I refer to goods that carry the same trademark, but the trademark is owned by different owners in different countries.
For example, we own the trademark for MAZOLA in the Asia-Pacific region, but some MAZOLA products owned by a different company for sale in a different market would find its way to our markets. These goods are not parallel imports or gray market goods because the trademark owner in the country of origin is a different company from the trademark owner in the country in which the product is imported to or sold. These are the type of goods that our company is challenged with. When faced with these goods, we take action against the importers or sellers of these products in our markets, as well as coordinate with the trademark owners of the brands where the product came from to try to stop spillover of their products into our markets.
We deal with online counterfeit sales as well. We would normally request the takedown of the pages selling the counterfeit products, and try to ascertain the origin of the counterfeit products so that we can take action against them.
You mentioned the need for vigilant border protection measures. What does this entail?
Well, this entails customs recordals in countries where we find our products to be most vulnerable to counterfeiting. We also join groups that are dedicated to brand protection matters in a particular country, such as the Quality Brands Protection Committee in China. The members of the group coordinate and share information and resources whenever possible. We also keep abreast with what is going on in the market, and keep a constant flow of information between customers and distributors, as these are good sources of information on counterfeit matters.
What qualities do you look for in outside counsel?
The most important qualities are competence, promptness in reply and value for money. I am looking for someone who is able to help us make decisions easier and makes my job easier.
What activities do you recommend for INTA delegates visiting Hong Kong for the first time?
They should try the food! Hong Kong has a variety of food choices for the food adventurer, from the street food to fine dining cuisines. I also recommend that they download an app on their mobiles for translating the names of the major destinations and streets of Hong Kong into traditional Chinese characters, since there are many taxi drivers in Hong Kong who do not speak English well.
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