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Wednesday, September 2, 2015

Tencent beats pirates in Indonesia

Image result for tencent qq

China's Tencent, operator of the QQ instant messaging service, has brought  a cancelation action against a local trademark owner, Susanto. Tencent owned some class 9 and 38 registrations. Susanto had registered several marks that were similar and identical: QQ, QQ KIU KIU and QIU QIU. Tencent claimed they were made in bad faith and blocked their own new applications.

The Central Jakarta Commercial Court and later the Supreme Court found in favor of Tencent. A straightforward case perhaps? Given the brand is well known only really in Greater China maybe not so. But great that Chinese companies are asserting rights and the Jakarta courts are making good clear sensible decisions.

 

Friday, August 28, 2015

Online secondary liability and e-commerce

Image result for mobile shopping icon
The question of secondary liability for online intermediaries is one which is starting to gain importance in SE Asia. There are no clear global rules - the 1996 WIPO Copyright Treaty has only a general definition and is now somewhat out of date.  SE Asia has a several common law countries, where contributory liability can exist. It also has civil law jurisdictions where it may be necessary to look outside IP laws to civil codes where there may be acts of collaborating or assisting illegal acts. In Thailand and the Philippines the IP laws only cover copyright secondary liability, not for trademarks.

One problem is that the usual primary acts of copyright, communicating and distributing illegal copies may not apply to the newer classes of internet intermediaries which are assisting others to do those infringing acts. At the GFIP in Singapore this week the issue arose several times, whether secondary liabilities really existed everywhere or whether all intermediaries like payment providers and advertising networks were covered.  

Meanwhile online shopping is booming in SE Asia  Alongside the global platforms like Ebay are regional ones like Lazarda/Zalora, as well as local ones like OLX in the Philippines, Weloveshopping in Thailand and Kaskus in Indonesia attracting millions of users every month. The SEA region needs to look hard at this area and figure out how to play legal catch up with the e-commerce its citizens are engaged in.

 

Wednesday, August 26, 2015

Singapore counterfeit goods transshipment

Image result for singapore container port
IPWeek@SG closed today. IP Komodo espoused in the last talk one final message that Singapore address the issue of transshipment of counterfeit goods through the island state. Singapore is the largest transshipment port in the world, which unfortunately means it is transshipping a vast quantity of counterfeit goods - probably unknown to it.  Singapore earns a lot of money from this, charging shipping lines and storage charges for containers.

Meanwhile with no customs recordal and limited ex officio action, it is up to brand owners to try and divine what counterfeit goods are passing through Singapore and report it to Customs. And then engage in pricey civil litigation to detain and destroy goods. Clearly a civil court seizure system is inappropriate for what is essentially a volume problem - vast quantities of counterfeit goods passing through Singapore en route to other ports worldwide.

What Singapore needs to do is conduct effective Customs risk assessment analysis and intercept suspect shipments passing through the port, then report to IP owners. But first establish a system whereby once illicit counterfeit goods are identified then upon notification to the shipper to justify why the goods are not fake (in which case it can go to court - very rare), then the goods should be destroyed.

Then Singapore can rightly claim to be the region's IP hub. Right now the issue of transhipment causes more than a whiff of suspicion from brand owners.

 



 

Tuesday, August 25, 2015

ASEAN harmonisation - multilateral and bilateral solutions


The ASEAN Working Group on Intellectual Property Cooperation (AWGIP) is the ASEAN group responsible for IP issues. Made up of all the IP offices from each of the 10 countries, Singapore has just passed the rotating chair to Brunei. Dr. Cham Prasidh, Cambodia's Minister of Industry and Handicrafts spoke at IP Weeks GFIP conference in Singapore this week. AWGIP has been in operation since 1996 and has held 47 meetings he said, suggesting not enough had been achieved yet. A key challenge he said is assertions of national sovereignty over IP. ASEAN governments often play this card in AWGIP discussions on IP, which frustrates harmonisation.  This is despite the process to enable the free flow of goods, services and people under the AEC being formed in late 2015.

Bilateral attempts are being made to speed up harmonisation therefore. Cambodia has put in place a 2 in 1 package to extend Singapore patents and designs to cover Cambodia too.  In fact it's a fast track system which dispenses with local search and examination in Cambodia. The hope is to extend this to other countries in due course. 

ASPEC is another step, but this merely fast tracks the examination part and doesn't speed up patent grant enough. 
IP Komodo notes that sometimes bilateral steps are necessary to accelerate IP harmonisation. 

Monday, August 24, 2015

Singapore IP week starts




Singapore is holding its IP week in the island city this week. Led by IPOS and its IP Academy, there are 8 IP events on this week. These include the ASEAN Working Group on IP Cooperation, (a meeting of the region's IP offices), several IP conferences including the Global Forum on IP, (Singapore's biannual flagship IP event), together with seminars run by the USPTO and UK IPO, MIP, WIPO, and Marques.  Some 800 professionals from the IP world are here, at what is now the SE Asian region's largest IP gathering. Speakers from industry, IP offices, IP industry associations and private practice are here, including the odd lizard. 

Sunday, August 23, 2015

Dissimilar goods in the Philippines

Image result for kolin electronics

In Kolin Corporation Ltd v Kolin Electronics Co, Inc, the Philippines Supreme Court got to rule on a question of when goods are similar or dissimilar for trademark law purposes. Both companies owned the marks KOLIN for different goods in class 9. The case began with an opposition filed by Taiwan's Kolin Corp. who owns KOLIN for TVs and DVD players. The Philippines company Kolin Electronics makes power supply products and also registered its mark in Class 9.

The case proceeded through appeals to the Supreme Court. The key question was whether the goods were similar, or not, even though they both fell in class 9 under the Nice Classification. The Court's view was that Nice was not the 'sole and decisive factor' but 'similarity of the products and not the arbitrary classification or general description their properties or characteristics' was the right test. Clearly TVs are not the same as power supply products. The latter especially were not consumer goods bought by the casual buyer.

It is an obvious point and one reinforcing earlier cases, especially given class 9's breadth. But such decisions help set clear precedents for future arguments. The problem is that anyone who disagrees because they are on the wrong end of this argument can still appeal all the way to the Supreme Court delaying their case for years.  

 

Thursday, August 20, 2015

Implementing regulation for online Takedown and Website Blocking in Indonesia


Image result for online
A new Joint Regulation on the Implementation of Content and/or User Access Blocking of Content that Infringes Copyright and/or Related Rights on Electronic Systems has been passed by the Ministry of Law and Human Rights and the Ministry of Communication and Informatics. The Joint Regulation was signed and took force on 2 July 2015. It implements sections of the Copyright Law No 28 of 2014 - the provisions which make online content that infringes copyright and/or related rights illegal. It is a Joint Regulation because while the Minister of Law and Human Rights' Directorate General of IP (DGIP) has overall responsibility for copyright, the blocking of online access is possible technically only by the Ministry of Communication and Informatics.

The Joint Regulation covers complaints about online copyright and/or related rights infringements reported to the Ministry of Communication and Informatics. Any copyright holder including related entities like the author, licensee or Collective Management Agencies can submitted complaints. They are to be done the DGIP directly or through an electronic system (E-complaints can be submitted via the DGIP website).

A verification team at the Ministry of Communication and Informatics go through reports and provide recommendations to the Directorate General of Informatics. Decisions can be made to partly or entirely block access to infringing content. Blocking may be content or user access blocking. There are a series of time limits and a public database of blocked sites/users.
 
Although this system operated under the 2008 Electronic Transactions Law and its regulations, and has been widely used against pornography, it is now specifically targeting copyright infringements. It wasn't clear how IP violations which were referred to in the 2008 Electronic Transactions Law regime were supposed to be treated.

This week the Ministry of Communication and Informatics announced that it had shut down 22 websites containing illegal films based on complaints from the Film Producers Association of Indonesia (APROFI) using the new system. The IP Office anounced the takedowns in a press conference and the Copyright Office ran a seminar with the EU to share information about online enforcement.

Tuesday, August 18, 2015

Indonesian patent law amendments


Indonesia's patent law is at present under amendment. The process has taken many years but it is now believed that the law will be amended in the next 12 months. Some proposed amendments include:-

- The government will own all patented inventions by government servants, although an inventor remuneration system is proposed.

- An obligation to mention in the description the origins of any genetic resources and / or traditional knowledge for inventions derived from either source.

- Patents are declared capable of being used as backing for financial instruments.

- Compulsory licensing is permitted where developing or least developed countries require pharmaceutical products for which there is a granted patent in Indonesia but those pharmaceutical products can be manufactured in Indonesia, for export only to that developing or least developed country for the purpose of treatment of its endemic diseases.

The new patent law is scheduled to be enacted before the end of 2015, although this timetable may slip. The Chief of Special Committee for the draft Patent Bill, John Kenedy Azis, was appointed several weeks ago. The Committee will begin to schedule meetings and hearings for the Draft Law. Further amendments are still possible.   

Wednesday, August 12, 2015

Impersonating the IP office in Vietnam


Image result for national office on industrial property vietnamVietnam's National Office of IP (NOIP) has issued a Notice saying that there are people impersonating NOIP officers, sending emails and making phone calls to businesses about IP. They are coercing them into registering IP, asserting that there are pending applications similar to their IP which may be registered unless the IP holder files a new application. This is a typical scam in Asia most usually seen by Chinese domain name registrars. The NOIP has officially published their contact details so people can directly contact the NOIP. 


 

Monday, August 10, 2015

Daiso wins in the Philippines Supreme Court against rival retail brand

Image result for japan home DAISO
It has been reported that the Philippines Supreme Court issued a ruling affirming a Court of Appeals (CA) decision, which ruled in favor of Daiso Industries Co. Ltd . of Japan (Daiso) in ordering the cancellation of a trademark for DAISO registered in the name of Japan Home, Inc. (Japan Home).

Japan Home, a Philippine corporation, operated DAISO retail stores selling various types of housewares. On 30 April 2007, Japan Home registered the mark DAISO for goods and services in classes 21 and 35.

On 9 February 2009, Daiso, filed a cancellation action at the IPO’s Bureau of Legal Affairs (BLA) against Japan Home’s registration of the DAISO  mark. Daiso argued that it is the prior user and owner of the mark since 1977, that it uses the mark as a trade name worldwide. Daiso said that Japan Home’s registration was fraudulent, intended to ride on the goodwill of Daiso. In response, Japan Home relied on the "first-to-file rule" and challenged the claim that the Japanese company's DAISO mark is well-known.

The BLA upheld Japan Home’s registration for initially ruling that Daiso failed to show actual prior use and well-known status in the Philippines. On appeal, the IPO’s Office of the Director General (ODG) ruled that the mark is internationally well-known and ordered the cancellation of Japan Home's registration.
 
Japan Home appealed the decision to CA, which still ruled in favor of Daiso and declared the mark DAISO a well-known mark. The CA stated that Japan Home’s registration only gives a presumption of ownership while the “first-to-file rule” is only a prima facie presumption that the prior mark is superior to any subsequent application. The presumption of ownership and the “first-to-file-rule” must give way to contrary evidence of the earlier registration being made in bad faith or where there is a well-known mark of another or that there is an actual prior and continuous use in good faith by another in the concept of an owner. The CA noted that while the territoriality principle requires that a mark be used in commerce in the Philippines to be entitled to protection, internationally well-known marks are the exception to the rule. Further, as DAISO is also used as a trade name by Daiso, and both Japan and Philippines are parties to the Paris Convention for the Protection of Industrial Property (Paris Convention), Daiso’s trademark and trade name are protected against confusingly similar registrations. The CA also stated that the similarity of Japan Home’s mark to Daiso’s mark suggested bad faith on the part of Japan Home.
 
This was a long fought battle, but the CA decision appears clear and well reasoned, and we assume the Supreme Court followed similar reasoning.

 

Wednesday, August 5, 2015

Domain name struggles continue in Vietnam

Image result for VNNIC
A conference called “Handling Infringement of Domain Names as to IP Rights” was held on 21 July by the Ministry of Science and Technology Inspectorate and Ho Chi Minh City Department of Science and Technology. Its purpose was to help prepare a new Draft for Circular on Domain Names.
 
Domain name disputes are controversial because although cases can be heard in court and decisions are being made, there is still no proper enforcement mechanism whereby a domain name decision can be implemented by the National Domain Name operator VNNIC and the registrar thereunder. See here for an earlier discussion of the problem which remains unresolved.
 
An illustration of the problem is the  www.ibm.com.vn. A dispute over this domain name started in 2003 but IBM Vietnam were unable to recover it and VNNIC would not act. The infringer Gia Hao Ltd. just disclosed that he has received an official request from Ministry of Science and Technology to have an meeting with IBM Vietnam in Hanoi to mediate the dispute. only through long painful negotiation can domain names presently be recovered.
 
The conference invited domain names holders, legal practitioners, IP representatives and agencies to discuss the current situation and possible resolutions for the obstacles. Lets hope the new Circular will resolve the issue rather than layering on more confusion.
 

Monday, August 3, 2015

New enforcement coordination rules in Indonesia

Image result for directorate general of intellectual property rights indonesia
A new Ministry of Law decree on handling IP cases has been issued. The decree mandates how the IP Office's enforcement team (called PPNS) is to manage and process complaint submissions. For some years there has been a great deal of uncertainty around PPNS cases, in particular when the police need to be involved. The net result has been inconsistent practice, uncertain raid outcomes and few if any prosecutions.
 
The decree outlines internal procedures. Most of the investigative processes appear similar to current practice, but in more detail.  The decree does not mention any recommended or mandatory timelines. So the PPNS may still be prone to lengthy delays. The decree does allows for online submission of complaints via an e-system. KORWAS is the police unit assigned to manage PPNS cases and it plays a hands-on role in internal procedures.The decree allows PPNS to conduct raids and make seizures without KORWAS (police) accompaniment. But in practice, PPNS may still want police for security and support.
 
The decree also introduces a new mediation process that is mandatory for all copyright cases except piracy cases, in line with Article 95 of the new Copyright Law which requires mediation. It is not yet clear if this will apply to trademarks as the new draft Trademark Law has not been enacted yet.
 
It takes time for these kinds of rules to bed down and start working, and certain critical missing functions still prevent PPNS conducting raids (e.g. no where to store seized goods). But it is a small start hopefully to more enforcement actions in Indonesia after years of ineffective enforcement (as detailed in the US Special 301 report in May - see here).
 
 




 

Sunday, July 26, 2015

How to measure the volume of raids and seizures - Indonesia, Philippines and Thailand comparative data

Indonesia's IPO investigation team has published its latest figures about enforcement raids. It still makes disappointing reading that only 9 raids have taken place in 2015 so far. The police probably handle a few more, but they do not publish and due to their reputation for demanding operational costs for economic crimes, few IP holders can use them.

Statistics / data 2011-2015
No
Intellectual Property Cases
Year
2011
2012
2013
2014
2015
1
Copyright
2
4
3
5
1
2
Patent
0
2
0
1
0
3
Trademark
26
25
14
10
6
4
Industrial Design
6
3
0
1
2
Total
34
34
17
17
9

Comparative data from elsewhere isn't always ways to find. So how do we measure Indonesia's 17-34 raids per year - lets say 50 if we include police raids.  
 
In the Philippines they measure the number of products seized. This always sounds better because they can talk of millions of dollars, but basing fake values on real values isn't entirely accurate. That said the Philippines enforcement bodies say they will seize over P13 billion ($287.57 million) worth of fakes in 2015. On July 7 Intellectual Property Office of the Philippines (IPOPHL) announced this target. In the first 6 months of 2015, Philippines authorities have seized some P775 million ($17.15 million) worth of counterfeit and pirated CDs, DVDs, books, medicine, designer bags, shoes, and other items. This does not exclude FDA (Food and Drugs Administration) and Bureau of Customs data which was not yet included.  Whilst they don't say how many raids this took, the expectation is that it would have been thousands of cases, because Thai data does break both out.
 
Thailand's police publish statistics on all raids by all departments.  In 2014 the data shows:
 
Trademarks  - 5,974 cases - 817,792 items seized
Copyrights  -  3,592 cases  - 308,235 items seized


It is hard to know what calculation would be needed to value the goods, but assuming say 25 USD a product that would take the value to USD28 million. The Thai data doesn't include Customs, but they seized hundreds of thousands of products in 2014 too.

What this analysis shows is that Thailand and Philippines are operating enforcement systems that seize4 large quantities f products through thousands of raids each year. Indonesia's enforcement therefore in comparison is almost non existent.