Powered by Rouse

Powered by Rouse, the emerging markets IP firm. www.rouse.com

Tuesday, April 22, 2014

The wait for Myanmar's IP laws

The arrival of Myanmar's IP laws is taking longer than hoped. The drafting of the trademark law has taken several years and has now reached the 11th version! It has yet to be signed into law by the President, and the expectation is that it is perhaps a year away.

Many have contributed. WIPO has been heavily involved. So too INTA, who sent a delegation there just a few weeks ago.

One of the first jobs will be to set up the Myanmar Trademark Office. After some discussion it appears there will be two branches, one on the capital Napyidaw and one both Yangon, the commercial centre. There is some relief about this from those who worried about long journeys up country to Napyidaw!

Existing trademarks already deposited at the Registry of Deeds under the old trademark system, will be grandfathered in, so will keep their earlier priority dates. Under the new law Myanmar becomes first to file. As such best practice is to file now, to avoid conflicts later.

Sunday, April 20, 2014

Corruption and the rule of law - Indonesia's continuing burden

Upholding the rule of law remains a serious challenge in Indonesia shows the Rule of Law Index Report 2014 by the World Justice Project. It says that corruption is still rife in the judiciary and law enforcement professions. Civil justice is weak. The Jakarta Globe newspaper reported last week that progress was slow in the 15 years of Indonesia's democratic era. 32 years of Suharto’s dictatorship created deep problems and each government since has failed to improve this.

The WJP measures several things:

- The effective enforcement index is the effectiveness and speed of enforcement of civil law decisions and judgments. Indonesia scored 0.29, below Serbia. Singapore scored 0.85.

- Indonesia came 80 out of 99 nations for corruption in the legal system. Specific problems included, bribery of judges, prosecutors, or by lawyers. The Constitutional Court’s former chief justice, Akil Mochtar, is currently on trial on charges of bribery and money laundering.

- For the judiciary corruption index, Indonesia scored 0.34, lower than Ethiopia, which scored 0.35. Singapore scored 0.84. This measures whether judges and judicial officials solicit and take bribes. It also measures whether the judiciary and judicial decisions are free of improper influence from government, private interests, and criminal organizations.

Much is blamed on a culture of such behavior by Indonesians in their dealings with the law: they want to win more than they want justice. Money is spent wastefully in legal proceedings and they treat legal procedures like a gold mine.

For corruption in the police or military, Indonesia scored 0.37, alongside Afghanistan, which received the same rating. This measures whether police officers and criminal investigators refrain from soliciting and accepting bribes to perform basic police services such as investigating crimes. It also measures whether government officials in the police and the military are free from improper influence by private interests or criminal organizations. Poor remuneration is a cause too.

Lawyers are blamed too. Law students’ quality is just mediocre and legal education is cheap but not prestigious according to commentators.  Serious social and economic consequences re cited as the imperative for Indonesia to fix the rule of law. It is an investment yardstick, it hinders development and harms employment, apart from the environmental and human rights impact. Ordinary people who want to change this hope the 2014 elections bring a government who will at last tackle the issue. Indonesia features lowest of all G20 nations.

Wednesday, April 16, 2014

Thai Singapore dispute over cultural heritage

Thailand has been a very active protector of its cultural heritage. They are the leading country in SE Asia for protecting their own GIs. Thai rice, silk and other products have been protected - see earlier posts under the Thailand GI link below right.

Now a more ephemeral object of protection is causing Thai hackles to rise. A company in Singapore announced it will hold a Songkran festival in April. Somgkran is the Thai water festival.  The Tourism Authority of Thailand (TAT) expressed concern and is consulting other state agencies to see if legal action could be taken to protect Thailand’s cultural heritage.

It is hard to see that a festival can be protected as a form of IPR, and in any event there were presumably lots of Thai people in Singapore holding similar events. Still you have to admire Thailand for asserting its rights continually to protect its culture.





Sunday, April 13, 2014

A ham fisted attempt at infringement in the Philippines

The Philippines Court of Appeals has ruled on a case of trademark infringement and unfair completion. The case, San Miguel Pure Foods Company Inc. v Foodsphere Inc. involved SMs “CDO Pista Ham”. SM alleged Foodsphere's “Fiesta Ham” infringed its registered trademark and amounted to unfair competition. It filed the case in 2010 at the IPO BLA, and the appeal was decided in March 2013. 

Foodsphere already had a trademark for FIESTA registered so there was no infringement. Meanwhile the packaging similarities complained of by SM were held not to be close enough as they comprised images of sliced ham with fruit.  It seems Foodsphere stayed just the right side of the line to avoid infringing.

Tuesday, April 8, 2014

East Timor IP update

Asia's newest country, East Timor is finally moving into a new phase in that new country's development, IP Komodo observed on a trip to the capital Dili this week. Business is booming, even the Chinese are coming to invest. 

IP law development might now move forwards. Copyright is specifically referenced in the Constitution (IP Komodo wonders if they had meant intellectual property generally when they drafted it rather than only copyright).  But with no international treaty membership, it is possible that for copyright to arise there must be local creation. There is no present clarity on this.

Trademarks have for many years been protected only by cautionary notices, despite several attempts to set up quasi registries. Now the Ministry of Justice are apparently drafting a TM law, probably based on Portugal's law. Meanwhile the Ministry of Commerce is proposing to set up a registry (as its internal administrative decree specifics this role for the Ministry of Commerce).

It is the usual problem that business booms, goods and services are traded, while the government tries to catch up. But with the country stable and the economy booming, then perhaps 2014 will see IP protection arrive at last.

Thursday, April 3, 2014

Singapore's coup over Indonesia's Ku De Ta

logoKu De Ta is one of Indonesia's top brands; the legendary Bali beach club and nightspot, where beautiful people sunbake, eat, drink and party to dance music. Its brand problems are a different sort of fame. See here for a previous post setting out the background.

In short the Indonesian Ku De Ta owners brought cases in Singapore based on their well known mark, against the Singapore registered trademark owner, Nine Squares (an Australian Company) who licensed the mark to one Chris Au (believed to be involved in the Indonesian operation originally) who in turn assigned this right to use to the Defendant operator, Ku De Ta SG Pte Ltd. They operate a huge Ku De Ta club atop the Marina Bay Sands casino, perhaps the premier nightspot location in Singapore.

The Indonesian owner recently lost the case. It seems to be on the technicality that they could not prove Ku De Ta was famous in Singapore by 2004 (when Chris Au applied for the mark).  The best guess is there are 2 fundamental problems:

- a group of 'partners' did not agree who owned what in the early 2000s and one of them registered the brand elsewhere, speculatively.
- they did not get organized to manage and protect the brand when they set up

They are appealing but counsel Singapore familiar with the case say they probably will not win.

Meanwhile, French luxury company LVMH's Venture capital arm is buying KDT Singapore. They plan to renovate the Singapore club, open in Hong Kong and take the Ku De Ta brand global. Nine Squares already registered the mark in Hong Kong and elsewhere.

This is a text book example of how to lose the global potential of a brand by failing to manage and invest in it at the start.

Tuesday, April 1, 2014

Thailand's domestic IP struggles

A WSJ article about infringement of Thai IP illustrates the classic developing country IP conundrum. Thai IP owners suffer just as much as foreign companies, but it's the luxury items sold from sidewalks to tourists that hit the headlines.  Some interesting examples of infringement of local IP and growing awareness and desire to own IP are cited.
Propangandist, a distinctive lighting maker is taking action against copycat lamps. See this picture of it's unique lamps.
Thai music publisher, GMM Grammy says it is preparing lawsuits to collect performance fees from musicians who routinely play famous music as part their cover repertoires. The musicians are fighting back claiming a longstanding tradition of local cover music.
A local TV station Blue Sky claims copyright in whistles shaped as lightning bolts, commonly an antigovernment symbol. 
It is not all bad news as the IP recognition given to Thailand's Siam Cement Group shows - see here.
It has long been a tragedy that local creative industries in South East Asia are ignored by their governments. They often have the least resources, understanding and capability to stop IP problems.  

Saturday, March 29, 2014

Indonesia pushes on with tobacco IP challenge

The tobacco wars continue with Indonesia being granted by the WTO the right to challenge Australia’s plain packaging laws before a full panel. 5 tobacco producing countries are at various stages of challenging Australia's controversial 2012 laws that restrict cigarette packs to plain green with white labels. The basis is breach of trade laws and restricting IP protection. See here and here for more background.

Australia seems to want a fast resolution so filed no objections. The cases have have taken a long time in WTO terms, a sign say Australian commentators that the industry is seeking to delay an ultimate likely loss.

While some cases are clearly brought by tobacco companies, such as PMI's case against Australia that the laws breach a bilateral trade agreement, others such as Indonesia's may be more obscure. It's own cigarette industry is not dominated by the major white cigarette makers but kretek clove cigarette producers, who sell little in Australia. Meanwhile Indonesia's health ministry is implementing rules to restrict tobacco marketing, which is more in keeping with Australia's laws.  Other countries are watching from the wings, before pushing ahead with their own similar laws. Australia already beat BAT and JTI in domestic lawsuit challenges 2 years ago.

Friday, March 21, 2014

Myanmar's first conmsumer protection law

Burma enacted its first Consumer Protection Law last week.  The law is intended to address product safety. The law mandates criminal penalties for those who distribute unsafe products.
A Committee for Consumer Protection will operate a disputes and sanctions system. Under the new law consumers may complain to the Committee if they are not satisfied with a product. There is a counterbalanced right that consumers may not publicize concerns about a product e.g. on social media, without solid evidence.
The NGO Consumer Protection Association has identified many poor quality imported products with Chinese products often a concern. The Ministry of Health's FDA has struggled to monitor product safety in the past.  Better law enforcement has been repeatedly cited as being equally important as new laws. 

Tuesday, March 18, 2014

Civil copyright litigation continues to grow in Vietnam

The tradition of filing civil copyright litigation in Vietnam continues - see here for previous cases.  The latest is the famous Dale Carnegie performance-based training organization.

Last week Dale Carnegie Vietnam organized a press conference at its school. It announced the filing of a copyright piracy case in February in the Ho Chi Minh City Peoples' Court against a prevous trainer at the school called Hieu. He had been found using the school’s copyrighted training curriculum for his own private business after he left. He had been given the materials only for teaching the school’s students or partners. However Hiew made the mistake of soliciting Dale Carnegie’s clients to his private school. He even undertook at one point to cease this, but did not. So Dale Carnegie Vietnam decided to sue Hieu for copyrght piracy.

The case follows well trodden path of copyright cases and should bode well for those contemplating civil litigation for IP violation in Vietnam.

Friday, March 14, 2014

The setting of the Philippines cement wars

A collection of disputes in the Philippines concerning the EAGLE cement brand appears to be coming to an end. The Bureau of Legal Affairs (BLA) recently decided a number of cases all in favour of Republic Cement Corporation (formerly Lloyds Richfield Industrial Corporation). Republic is now owned by French cement and construction materials giant Lafarge. The BLA consistently held that Republic is the owner of the mark EAGLE CEMENT, contrary to Respondent Eagle Cement Corporation’s assertions. Eagle was founded by Ramon Ang, the President of industrial conglomerate San Miguel Corporation. Its brand is shown here.
Republic Cement filed several oppositions and cancellation actions against trademark applications and registrations filed and owned by Eagle. Republic alleged that its predecessor Lloyds Richfield had first adopted the mark and used it since 1992 on cement products sold in the Philippines. In 1997, Lloyds Richfield had filed an application for the EAGLE CEMENT, but had failed to comply with formalities requirements, thus resulting in abandonment of the application. Lloyds Richfield and then Republic continued to use the mark notwithstanding the abandonment despite not having a proper registration. 
Eagle in June 2008 filed an application and acquired a registration for the mark EAGLE CEMENT & DEVICE. It started operations in 2010. It later filed several other applications for variations of the EAGLE CEMENT mark. Eagle contended in the dispute that Republic had no right to cancel its marks, as it had failed to file oppositions when the marks were published, and only belatedly filed cancellation actions. 
The BLA sensibly, and following its own previous decisions confirmed that registration was a presumption of ownership, which could be overcome by evidence to the contrary. It is not an application or registration that confers ownership of a mark, but it is actual ownership of the mark which confers the right to registration. 
In the cases, the BLA said that records and evidence clearly showed that Republic and Lloyds Richfield coined, appropriated and used the contested mark on cement products well before the Respondent adopted and filed applications for the exact same mark for use on identical goods.

It was perhaps a poor decision of Eagle to try and appropriate an existing mark; however Republic and Lloyds Richfield should really have got their rights in order before embarking on extensive trade. However Eagle Cement continues to trade according to its website and we can expect that while the first round has been won by Republic, Eagle with its deep pocketed backer will continue to fight until the war is over.  

Tuesday, March 11, 2014

ASEAN Member States’ IP Offices and the EPO Strengthen Cooperation on Patents

The 9 Heads of ASEAN Member States Intellectual Property Offices and EPO President BenoƮt Battistelli met in Siem Reap last week. They signed their first regional Memorandum of Co-operation (MoC) on Industrial Property. The overall aim is to establish an institutional framework for co-operation in the field of patents. Europe's angle is the growing economic significance of the 500 million strong South East Asian region.

Several planned projects are envisaged to support  the on-going patent-related initiatives under the ASEAN Intellectual Property Rights Action Plan 2011-2015. These include work-sharing arrangements, patent information, and development of search and examination capacities of the ASEAN patent Offices. The EPO offered training of patent examiners; data exchange; patent classification assistance; machine translation; search tools; and exchanges of best practices and technical/policy solutions.


Sunday, March 2, 2014

Franchising in the Philippines

Franchising is a highly popular way of developing a business. In the Philippines a huge number of foreign F&B outlets can be seen; with US ones especially popular.

There is no specific franchising law in the Philippines. Franchising arrangements are therefore subject to the Civil Code and the IP Code. The parties to a franchising contract are free to agree their own commercial terms. But agreements must not breach Philippine laws, morals, good customs, public order and public policy.

Franchising agreements can also fall under the definition of "technology transfer arrangements" which are governed by the IP Code. Under the IP Code, technology transfer arrangements must not contain any specified Prohibited Clauses in Section 87. Also they must include all the Mandatory Provisions in Section 88. If an agreement does not comply with IP Code requirements, the agreement is unenforceable, unless it is exempted on very limited grounds where there are substantial benefits to the economy.

With only a few limited areas to keep in mind, franchise agreements are a simple way to proceed.