Sunday, March 24, 2019

Indonesia Madrid trademarks update

Image result for madrid international trademark system The Madrid trademark system has been operating in Indonesia since 2 January 2018. By March 2019, over 8,000 international applications have designated Indonesia. On average, it takes around 2-3 months for WIPO to complete the formalities stage and forward the applications to the TMO in Indonesia. So far over 5,000 applications have been received and are undergoing examination. It is taking around 7 months to complete examination. A number of office actions have been issued since the start of 2019. Around 80% are passing without office actions.  

One of the major challenges is unrecorded assignments – the Indonesian TMO’s proprietor data needs to be updated faster. The result is the TMO does not always know who the correct proprietor of a blocking mark is. Another is when the specification is limited in Indonesia compared to other markets; this negates many conflicts; applicants need to ensure they know whether this has happened to avoid unnecessary conflicts.

Indonesians are also using Madrid. So far 28 local companies have filed 32 international applications. 

Thursday, March 21, 2019

Facebook Marketplace and IP infringement in the Philippines

Image result for facebook marketplace The Intellectual Property Office of the Philippines (IPOPHL) aims to regulate small and medium enterprises (SMEs) that are selling products online using Facebook as a sales platform. Philippines is a fast growing digital commerce market in the SEA region. In January 2018, Facebook introduced its marketplace service in the country allowing Facebook users to use Facebook as a platform to buy and sell goods online. However, plenty of sellers on Facebook are selling their products without having registered stores and this leads to problems in relation to intellectual property violations as it becomes very difficult to trace these people if they sell fake goods. 

In order to address this issue and regulate the FB marketplace, IPOPHL is working with the Department of Trade and Industry (DTI) to push for the registration of online retailers with the DTI. So, in case an online seller is found without registration, it may be removed/taken down from Facebook. IPOPHL intends to seek help from the National Telecommunications Commission (NTC) as well, to gain more authority to ask Facebook to take down the social media pages of illegal online businesses. IPOPHL is also keen to work with trademark owners as their cooperation is key in enforcing intellectual property. Many may not be aware that how the Facebook marketplace is so used in the Philippines.

Tuesday, March 19, 2019

The trade in fakes from and through SE Asia

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The publication of the OECD/EUIPO updated report Trends in Trade in Counterfeit and Pirated Goods provides more data and corroboration on the role of SE Asia in the global fakes trade.
Of course China dominates as the global source, including transited goods through Hong Kong. But the report identifies other SE Asian countries too. Malaysia, Thailand, and Vietnam are all small but important producers in many goods sectors. Singapore features as a source as a result of transhipment of fakes through its port.  The global fakes trade is valued at half a billion Euros and growing. Footwear and clothing are the largest volumes of fake goods seized, but the usual range of products from consumer and household to pharma remain common, as well as IP-infringing packaging and labels.
Places with weak governance attract counterfeiting. This includes bot  countries with large grey economies, and specifically Free Trade Zones. The boom in internet orders and small parcel deliveries by post or courier services is now dominating seizures. For customs and IP owners this means more work for less volumes.  Weak port systems (lack of shipment information transparency, no advance clearance systems etc) encourages the fakes trade.
The authors also note a change to the rights owners affected with an increasing spread to companies from all countries. In SE Asia they identify a number of Singapore IP owners as facing fake goods problems.

Thursday, March 14, 2019

Myanmar passes Patent law and Copyright law

On March 11, 2019, the Assembly of the Union of Myanmar (the Parliament) passed the Patent Law No. 7/2019. 

On 26th February they passed the Copyright law too.

The next and final step is for the President of Myanmar to issue and sign a notification informing the date of entry into force of the Laws.

With the passing of the Trademarks and Designs laws earlier this year the parliamentary process is now complete.

Sunday, February 17, 2019

Unpaid Patent Annuities – extension of time to 17 August 2019

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Indonesia's DGIP had sent letters in mid-August 2018 to patent holder stating that if the outstanding annuities amounts were not paid within 6 months (i.e. by mid-February 2019), the Patent Office would not accept any new applications. See here for the background. 
The DGIP has just published a circular letter dated 17 February on their website. The DGIP has extended the period of time for a patent holder to settle any unpaid annuities  a further 6 months from the date of the circular i.e. by 17 August 2019. The reasons for this extension are that the August 2018 letter was not completely socialized and the procedures for the payment require more time and work to put in place.

Thursday, February 14, 2019

Thailand invalidates all cannabis patents

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The cannabis patent dispute has now escalated. The Thai government has issued a decree ordering the Thai DIP to invalidate all cannabis related patents. The military government is allowed to do this under the its special powers. Thailand legalised medical marijuana and kratom applications last year

The background is here but in essence an access to medicines lobby type panic has arisen because several pharma companies applied to patent cannabis related inventions. Unfortunately wild misinterpretation of patent rules has led to speculation that usual ogre, MNC big pharma is trying to block local research and prevent Thai medicinal products based on cannabis reaching patients. No one appears to have checked whether the patents are valid or not, instead simply asserting that they must be for natural processes. Nor did the government wait for the DIP’s usual patent examination. 

A frenzy of misreporting and misunderstanding seems to be part of the problem. The 10 or so patents in question ought to be rejected anyway if they don’t comply with Thai law, that is they are not novel uses. But it takes time to examine a patent and the government seems to have accelerated their decision in the face of a media frenzy.  The media does not report if the patents are for valid inventions or not? 

Now the worry is a worse situation will be created by the possible automatic invalidation of possibly good patents, in breach of WTO rules. Whether appeals will be filed is the next step to watch.  

Wednesday, February 6, 2019

Singapore/Battam case transhipment concludes

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The case of Burberry Ltd v Megastar Shipping Pte Ltd has reached the Singapore High Court. The case arose because counterfeit Burberry, Louis Vuitton and other luxury goods were shipped from China to Singapore, in two containers,  for onward shipment to Batam, Indonesia.  The crux of the Singapore litigation was about how the goods were transhipped through Singapore. 

The Singapore Court of Appeal has held that “goods in transit” are still imported so illegal under the Trademarks Act. However, the freight forwarder importer the goods, but it did not 'use' trade mark. Instead as a commercial freight forwarder it was unfair to impose liability for trade mark infringement as they are a mere conduit.  

The first thing to say about this is that transhipment is increasingly now viewed as something customs authorities must deal with from an IP perspective. The Singapore EU FTA ought to have covered it, but it did not include goods in transit. Singapore likes to defend its position as a transhipment hub, so not be obliged to check all shipments (despite earning money from each container that passes through its port). So it is positive that the court did find the goods imported in principle. In this case there were facts that showed the shipments passed through Singapore’s Portnet IT system. 

However the other issue is the use of the nearby Indonesian port, Batam. The problem there is that Indonesia has no effective border protection system, despite one being introduced last year. See here. So there remains a major issue whether Indonesian customs could stop the goods. Secondly Batam is a Free Trade Zone. It is often used for export processing, and illicit goods pass through it frequently. The region of Riau was historically known for smuggling - see here.  Indonesian customs generally do not interfere and it is not clear if the new IP border protection system could intervene at all. The IP owners suspect that such a huge volume of fakes cannot actually have been bound for Batam itself, that port being relatively remote from the major markets in Indonesia. 

So although important, the case probably doesn’t help in deterrence. Freight forwarders are not liable, and Indonesia’s Batam is still going to be used to handle illicit goods freely. The loss of the fake goods was the only deterrent to whomever the ultimate owners were, a fact which will never be known along with their ultimate destination.

Sunday, February 3, 2019

Compulsory Patent Licensing in Indonesia

A Ministerial Regulation No. 39 of 2018 on Procedures for Compulsory Patent Licensing took effect on 28 December 2018.  This Regulation mainly gives a clear structure to compulsory licensing in accordance with TRIPS.

Article 3 of the Compulsory Licensing Regulation sets out that the Minister may grant a compulsory license in several cases. One is that the patent holder did not manufacture his product or use his process in Indonesia within 3 years after the patent was granted. Another is the patent was used in a form or manner detrimental to the public interest. A third is that a patent for an improvement  cannot be implemented without another party's patent which is still under protection. 

Various categories of applicants for a compulsory license are possible. An applicant must submit an application to the Directorate General of IP. There is an examination process. The grant is conditional as follows:

a.     It is a non-exclusive compulsory license.

b.     Consideration must be paid for the grant to the patent holder.

c.     Evidence and information or an explanation for the compulsory license grant must be given 

d.     A time period of the compulsory license is provided. 

f.      Conditions on expiry and termination must be provided.

g.     The decision will specify what part of the patent is granted a compulsory license.

The Regulation covers when the  Minister may grant compulsory license for pharma products, specifically: 

a.     Manufacturing pharmaceutical products to treat human diseases.

b.     To import pharmaceutical products if Indonesia is not yet capable to manufacture it to treat human  diseases.

c.     To export pharmaceutical products outside Indonesia based on developing countries requests  (the Doha system related to import and export mechanisms).

The Minister must record the grant of any compulsory license and notify applicants and patent holders.  It is not clear whether Indonesia is simply implementing TRIPS or whether applications to manufacture medicines for third countries are likely.

Monday, January 28, 2019

Brand Values in SEA

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Brand Finance has issued its annual Brand Valuation survey. Every year this improves and gets more detailed. 

However SEA brands are still underrepresented. 8 SEA brands appear in the top 500 500 (1%), from a region representing nearly 9% of the world's population and 4% of global GDP. 

The most valuable SEA brands are the following. 3 Singaporean banks, DBS (202), OCBC (364) and UOB (363), Thailand’s PTT (359), an energy & chemicals conglomerate, Indonesian telco Telkom (442), Vietnamese telco Viettel Telcom (478), and from Malaysia Maybank (494) and Petronas (127), an energy company. 

The dominance of banks, telcos and oil & gas is illustrative of less developed economies. The major IP leaders in the industrial sectors such as Thailand’s SCC or in the consumer goods sector such as Indonesia’s Indomie or San Miguel or the Philippines, or Lazarda in ecommerce, do not feature yet.