Monday, July 9, 2018

Indonesia's Madrid regulation


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Government Regulation No. 22 of 2018 on Registration of International Trade Mark Madrid Protocol (“Regulation”) was enacted and took effect on 6 June 2018.

In summary the Regulation contains the following:

-           Applications can be filed via electronic or non-electronic forms and can be in English.
-           An Applicant should be an Indonesia citizen, domiciled or have a legal domicile in Indonesia, or have clear industrial/commercial business activity in Indonesia.
-           the IP Office conducts a formality examination within 5 days of receipt of an International Application.
-           the IP Office notifies the International Bureau within 2 months from the date of receipt of an International Application.
-           the IP Office shall notify the International Bureau of the result of the substantive examination within 18 months from the date on which it was notified of an International Application.
-           An Objection against provisional refusal can be submitted within 30 days from the date of the refusal notification from the International Bureau  
-           IR Holders can file a transformation request within 3 months where the IR is cancelled due to the termination of the Basic Registration or Basic Application in the country of origin per the provisions of the Madrid Protocol
-           IR Holders can replace existing trade mark registrations in Indonesia with an International trade mark designating Indonesia in certain circumstances. Both registrations do co-exist but the IR Holder gains protection from the initial rights based on the national registration in Indonesia.

According to WIPO’s Madrid Monitor database, there are 15 international trade mark applications originating from Indonesia already. Some 2,227 applications have already designated Indonesia. US, EU and Japan lead the designations. This is despite the system not being fully set up yet!

Tuesday, July 3, 2018

World Cup litigation in Thailand kicks off again


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Every FIFA World Cup disputes erupt in Thailand over broadcast rights. See here for the 2014 dispute.

Now in 2018 Bangkok’s Central Intellectual Property and International Trade court has had to weigh in on it. TrueVisions had again licensed certain broadcasting rights from FIFA.  There are several free to air channels (as in most countries), which in Thailand include Army''s Channel 5, True4U Channel 24, and Amarin TV Channel 34. Thailand's National Broadcasting and Telecommunications Commission’s (NBTC) has ‘must carry’ rules which require free to air World Cup content (since many years ago, it was pay only, to the anger of Thai football fans). 

For the Russia 2018 World Cup TrueVision showed matches in higher quality 4K ultra high definition, apparently the first in the region. Its Channel 400 gives high speed 50Hz refresh rate coverage for Gold and Platinum subscribers. TrueVisions claim it is 20 times clearer than existing standard systems. 

Meanwhile telecoms operator, Advanced Info Services’ (AIS) companies have been showing matches through their App based content channels for AIS phone subscribers in Thailand.  They had been rebroadcasting World Soccer Cup 2018 programs from free TV stations including TV channel 5 HD , True 4U channel, and Amarin TV Channel 34 via the  AIS PLAY and AIS PLAYBOX Apps. 

TrueVisions sued AIS subsidiaries Mimo Tech and Super Broadband Network in the IP/IT court for infringement of its broadcast rights. Although AIS is rebroadcasting games which are available free to air, TrueVisions argued that it too as licensee or the broadcast owner FIFA AIS had to provide consent for AIS to stream the games. The IPIT court agreed that mobile streaming of the football games breached TrueVisions’ rights for the tournament. The court ordered the two AIS companies to stop broadcasting the matches on 28th June.

Sunday, July 1, 2018

EU FTAs in SE Asia


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While the US busies itself issuing tariffs for IP violation, the EU is quietly getting on with a series of IP agreements in Asia. The EU Indonesia Free Trade Agreement (which contains a substantial IP chapter) is currently under negotiation. Four rounds of talks have been held so far. 

Meanwhile the Vietnamese Embassy in Belgium, in collaboration with the European Union (EU), the EU-Vietnam Friendship Parliamentarians’ Group and the European Institute for Asian Studies, held a workshop in Brussels on June 20 to speed up the signing and ratification of the EU-Vietnam Free Trade Agreement. Among the issues Vietnam is working to resolve to take advantage of the agreement, are a number of intellectual property areas. 

Apart from that in Malaysia seven rounds of EU Malaysia negotiations have been held but the FTA is on hold and a stocktaking exercise is being finalized to assess the prospect to resume negotiations. Thailand and Philippines are also in FTA negotiations with the EU now. 

Negotiations for a region-to-region FTA with ASEAN were paused in 2009 to give way to bilateral country FTAs, which will then be the building blocks towards a future region-to-region agreement.

Wednesday, June 27, 2018

Amendments to the Thai Patent Act


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Thailand’s Department of Intellectual Property (DIP) has been in the process of revising the Thai Patent Act B.E. 2522 which was last amended in 1999. This time, the revisions aim to improve especially application procedures. A key issue is allowing parties other than patent holders to export patented pharmaceutical products to other developing countries to address public health problems under the Protocol Amending the TRIPS Agreement. The DIP also seeks for Thailand to become a checkpoint for access and benefit sharing of Genetic Resources (GRs) and Traditional Knowledge (TK) in patent applications. 

Important points of the revision include:

  • Expansion of prior art definition to include prior art “widely known or used…outside Thailand before the application date”;
  • revision of provisions for permitted prior disclosures of subject matter or details of the invention made by inventors, applicants or authorized persons for a period up to 12 months before the application date;
  • new provisions relating to voluntary filing of divisional applications initiated by the applicants without having to wait until receiving examiner’s order as set forth by the current Patent Act, to speed up examination;
  • new provisions providing 2 periods of publication of patent applications;
  • a provision mandating publication by 18 months from the filing date in Thailand (at present publication time can be up to 5 years);
  • revision of the existing provision limiting timeline for requesting a substantive examination to 3 years from the filing date in Thailand;
  • new pre-grant opposition procedure within 90 days from the 2nd publication of the patent application;
  • revision of the provision for conversion of applications from patent to petty patent to 3 years from the filing date in Thailand, and the conversion from petty patent to patent to 3 years from the filing date in Thailand or before the issuance of the petty patent;
Thailand sometimes receives criticism for slow grant so speeding up the application process wherever possible will be welcome.  


Wednesday, June 20, 2018

A new approach to replacing fakes in the Philippines


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An innovative plan to replace counterfeit goods with local Filipino crafts has been proposed by the Intellectual Property Office of the Philippines (IPOPHL). The drive for this is the increased enforcement leading to a reduction in sales of fake goods by traders in the notorious  Greenhill shopping centre. Greenhills is undergoing upgrade renovations.

The IPO sees a different benefit namely to insert IP into locally-made products.  They hope that  a newly opened Greenhills can become a premier showcase for high quality and inventive Filipino products created by Filipino inventors, entrepreneurs and designers. The IPOPHL Director offered its network of Innovation and Technology Support Offices that support local R&D, to help. They identified locally designed jewelry is one opportunity along with specialized crafts like doll-making both of which are threatened by overseas imports.

Tuesday, June 19, 2018

Protecting Indonesia from biopiracy



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Indonesia’s rich biodiversity, the second largest in the world, provides for a long practice of traditional knowledge among its many indigenous communities. Its historically famous Maluku Islands, better known as Spice Islands is a good illustration of the commercial attractiveness of its abundant natural resources to many, including biopirates. “Biopiracy” is a term used to describe the commercial appropriation of ‘unprotected’ knowledge of biological resources without authorisation from and fair compensation or recognition to its native owners. This is defined and required under the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity. The Nagoya Protocol is a 2010 supplementary agreement to the 1992 Convention on Biological Diversity.  Unauthorised parties are restricted from the use of their traditional knowledge without the permission of its commercial owner. Biopiracy is more prevalent in developing countries where there is a lack of awareness and availability of legal protection for traditional knowledge and lack of funding for required research for commercialisation of natural resources. 

Indonesia has taken several steps over time to increase protection of its natural resources. The 2016 Patent law includes provisions on genetic resources and traditional knowledge based inventions. A new draft law aimed at research aims to be passed in 2018. It will impose tough sanctions intended to protect natural resources, local knowledge and to promote local researchers in international research projects. Foreign researchers will be required to submit their raw data to the government, and to recognise and include local researchers in published works arising from the project. Offences will lead to heavy sanctions, including criminal sentences and fines. This in addition to its past efforts including more stringent requirements and scrutiny in research permits granted to foreigners. The new law also requires foreign researchers to produce work that will ‘produce beneficial output for Indonesia’. 

In response to this latter rule foreign researchers and scientists have voiced alarm, stating that this rule will seriously discourage many important international research and collaboration with Indonesia because it is not feasible to guarantee that the research will definitely ‘produce beneficial output for Indonesia’. They say this goes beyond the Nayoya Protocol. The protection of natural resources is inconsistent in Indonesia. While attempts to protect the environment are worthy, enforcement is often lax, and the arguments over destruction of rain forests and reefs illustrate this.

Sunday, June 17, 2018

Laos amends its IP law


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Laos, one of the smallest economies in the region has updated its IP laws.  The new Law on Intellectual Property No 38/NA of 2017 took effect at the start of June 2018. It replaced the old 2011 law.  It contains various changes, in summary:

a.         The Trademark definition is expanded to non-traditional marks. Oppositions have been introduced. The intention is to create an online publication system.
b.         The patent regime is largely unchanged except for an increased ability of the government to challenge patents contrary to public policy.
c.         Industrial designs now have an opposition procedure.
d.         Plant Variety provision are changed inline with the UPOV Convention.
e.         Copyright protections are expanded especially in the context of digital broadcasts.

Enforcement procedures have been improved. There is a de-emphasis on administrative remedies. Ex officio customs IP enforcement is provided for although more rules are needed. Criminal IP enforcement is simplified.

Laos is an ASEAN member, but perhaps the least open and smallest economy.  However it to has to comply with ASEAN rules on IP protection and enforcement so it is not surprise that it has to modernise its IP system.

Wednesday, June 13, 2018

Indonesia's customs system - the final stage of setting up its IP border protection system



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After Government Regulation No. 20 of 2017 on Controls of Import and Export Goods under 2006 Customs Law came into effect on 2 August 2017, the Ministry of Finance has finally passed Implementing Regulation No. 40 of 2018 which sets out the procedures for customs recordal and seizures. The Implementing Regulation takes effect on 16 June 2018.
 
Recordal for trade marks and copyrights

Trade mark and copyright owners with a local business entity domiciled in Indonesia can now file customs recordal applications. In addition to the usual proof of trade mark certificates or copyright and information on genuine goods, the application must include documents relating to the local business entity, importer/exporter information and a statement of liability from the IPR owner. The IPR owner must also appoint an Examiner who can verify genuine products as well as understand the distribution and marketing of the products.

Once the application is submitted, Customs will review the application and approve/reject the application within 30 days.

Recordals are valid for one year and are renewable.
 

Restraint – confirmation by IPR owner in 2 days

Once Customs notifies the IPR owner of the restraint of a shipment, the IPR owner will need to send confirmation of its decision to either apply for Court detention order or otherwise to Customs within two days.
 

Detention order

The IPR owner or its proxy must then apply to Court within four working days and provide to Customs a bank or insurance guarantee of IDR100M (USD7,200) which is valid for 60 days. The application is to the Commercial Court in the jurisdiction of the port where the goods were seized.

Customs then holds the goods and provides the IPR Owner with a detailed summary of the shipment.  The Court must deliver its detention order decision within two business days from the filing of Court application and send its decision to Customs within one business day.
 

Examination of detained goods

Upon receipt of the Court detention order, Customs will detain the goods for ten business days. Within two business days of Customs’ receipt of the Court detention order, the IPR owner will need to send its request to Customs who will arrange a time for all parties including the appointed Examiner to examine the detained goods.

If more time is required, the IPR owner can apply to Court for an extension of ten business days but there will be an additional security.
 

Legal action/settlement
 

After the ten-day detention period, if the goods are confirmed as infringing and if there is no settlement, the IPR owner can take legal action. The 2017 Regulation provides that this means civil or criminal action or settlement. This is problematic, as it is not clear how it is possible to file legal cases in such a short period, and of course, lawsuits are expensive.
 

Comments

While it is positive that Indonesian Customs has introduced a system to record IP rights, this recordal system is currently limited to IPR owners with a local subsidiary. We believe the Indonesian government’s desire to encourage foreign investment is its rationale behind this requirement, as it hopes that many more foreign IPR owners will set up local presences in Indonesia. The process for the Court detention order and examination looks relatively clear, but this needs to be tried to see how it works, and the timelines are very short. Finally, there remains uncertainties if parties are unable to settle following the expiry of the detention order, they may have to choose to proceed with either civil or criminal action, which will be expensive.
 

 

Thursday, June 7, 2018

US and EU IP judgements on SE Asian countries; part 3 Indonesia

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Part 3 of this series on the combined views of the EU and US on IPO protection in major SEA economies focuses on Indonesia. 


The EU report says that Indonesia, having enacted new copyright and trade mark legislation, was also moved from Priority 2 to 3 in previous years. But market access barriers, weak governance and corruption continue to weigh down IPR infrastructure. There are high levels of pirated and counterfeit products, and no regulatory data protection. Legislation drafting is not transparent and IPR registration is very slow.  Enforcement by the IPO Investigation team has declined and the Police and Customs remain ineffective. Other concerns are absence of implementing regulations, lack of protection against unfair commercial use, bad faith trade mark registrations, overly lengthy and expensive Court proceedings, Court decisions are not published and contain very brief legal reasoning.  The patent law is cited as having problems.


The USTR shares similar concerns about the 2016 patent law which includes restrictive local manufacturing requirements as additional patentability criteria which “undermine innovation and research and prevent investment”. They mention the lack of regulatory data protection for pharma and plant products. It also questions whether the newly implemented Customs IP recordal system can really benefit foreign right holders, because only those with a local subsidiary can record their IP rights with Customs. The USTR also states that Indonesia GIs law raises questions about the effects of new registrations on pre-existing trade mark rights, and questions the lack of unfair competition laws.


Both the EU and the US look to Indonesia to improve IP enforcement cooperation among relevant agencies, to meaningfully address all concerns. Indonesia is in many senses, less well developed according to both EU and US in IP protection, and thus remains at a higher level of concern than other SEA countries. The EU is in the process of negotiating an FTA which includes a number of IP elements.  




Tuesday, May 29, 2018

US and EU IP judgements on SE Asian countries; part 2 Philippines

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In this second post on EU and US official views on IP protection in major SE Asian markets the focus is on Philippines

The EU states that Philippines has improved its protection and enforcement recently and has moved from Priority 2 to 3 (and if it continues its current positive trajectory could in future be removed entirely). The USTR credited Philippines for adopting laws and enforcement practices to prevent unauthorised camcording, but says it still has slow opposition proceedings.

The Philippines has made great strides in IP protection in recent years. It is held up as the best example of building inter agency cooperation, through the efforts of the IP department and its NCAC inter agency enforcement team. The big test is whether this continues under the present government.