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Monday, May 15, 2017

Cross ministerial coordination of IP activities; Philippines example

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The Philippines has been off the USTR Special 301 Watch List for 4 years now. One of the primary reasons for this is the formation and activities of the National Committee on Intellectual Property Rights (NCIPR). This is an interagency body to drive policy and improve IPR protection. The NCIPR has 12 members, with the Department of Trade and Industry as chair and the IP Office as vice chair.

Many countries struggle to implement IP policy across multiple ministries. Typically IP touches and involves multiple government bodies - IP offices, Prosecutors, Judges, Customs, Police, other administrative agencies, Information and Education, the Ministries for Health and F&B as well as Trade or Commerce as well as National Research agencies. Most countries' IP departments/offices are simply not given the authority to direct IP improvements at other ministries. IP protection always languishes when there is no top down drive.
 
The NCIPR is now regarded regional “best practice” for collaboration among agencies responsible for IPRs. The IPO team, as vice chair of the NCIPR, is tasked to lead coordination efforts.  They arrange meetings, drive enforcement activities, run an annual IP Summit, liaise with IP organizations, IP owners and IP practitioners; and conduct of education and awareness campaigns.

The NCIPR is now spearheading the National Intellectual Property Strategy (NIPS) of the Philippines, a project also being undertaken by the IPOPHL in collaboration with WIPO.

Monday, May 8, 2017

2017 Special 301 report

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This time of year sees the US issue its Special 301 IP assessment of trading partners, and the Priority Watch List (PWL) which lists countries not doing enough to seriously protect IPRs. In SE Asia Thailand and Indonesia remain listed. In previous years Vietnam and Philippines have both appeared, but now they appear on the lesser Watch List. That is perhaps a reflection of the steps taken to progress, and level of commitment, and not an actual comparison. 
 
For Indonesia the main problem is that “IP enforcement has been insufficient and Indonesia still has not issued long-awaited regulations confirming ex officio authority for border enforcement”. Widespread counterfeiting, especially of dangerous goods with no deterrence is raised as a basic concern. There is a lack of coordination across the various Ministries with IP responsibility and the USTR encourages the formation of a dedicated Police IP team to tackle serious criminal complaints.
 
Thailand is perhaps a surprising inclusion  given how much more developed its basic IP systems are than say Indonesia. But this illustrates the Special 301 review’s subtle approach. The focus shifts to more complex and technical issues – poor landlord liability provisions, a patent backlog, unlicensed software, lengthy civil IP trials and lack of high damages awards. Thailand does have an IP Roadmao and a National IP committee and a number of improvements are recognised,  such as steps to reduce the patent backlog and the large number of criminal IP cases that do occur.
 
All of this reflects an IP reality that you must first get the basics of IP enforcement right, and only then can you make progress at effective technology protection, using patents, trade secrets copyright and the like.   

Thursday, May 4, 2017

Criminal IP statistics in Vietnam and SE Asia

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One of the major barriers to enforcement in SE Asia is the lack of transparency around counterfeiting and piracy crimes.  Raids may happen but with multiple bodies handling them in a country and often no consistency, data is rarely collected. Criminal prosecutions may or may not follow; some countries have rules as to when a crime is prosecuted or not. When the regular criminal courts hear cases, it is very hard to collect data from remote areas.

The Vietnamese authorities and specifically Steering committee 389 which covers IP issues, announced in March their 2016 results, in the presence of the Deputy Prime Minister. 223,260 cases investigated, 1560 prosecutions of 1863 defendants and recovery of UDS948 billion were the numbers used. But these covered smuggling trade fraud and counterfeiting.  In effect counterfeiting and piracy is buried in the data.  

Countries choose their own information collection methods and reporting so the net result is no clear comparable data. ASEAN says that it intends to as part of its proposed enforcement plan to help collect data on enforcement.

This is a critical need for the region; to help understand how effective enforcement actually is and where improvements are needed. Thailand for all the criticism does at least have clear data from its IP/IT court because only one court hears IP cases. The rest of the region can hide weaknesses through poor data; IP holders need to start to drive collection and review of data to improvements can be made.

Wednesday, May 3, 2017

Philippines Trademark similarity decision

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The Philippines Supreme Court decision in Seri Somboonsakdikul vs Orlane S.A. (G.R. No. 188996, 1 February 2017) shows how the Philippines courts must look at elements of the dominancy test to decide trademark similarity.

In 2003 Seri applied for the registration of the mark LOLANE in class 3 for personal care products. Orlane S.A. of France opposed the application for being similar to their ORLANE mark, first registered in 1967. All the lower level decisions ruled that LOLANE is confusingly similar to ORLANE. The Philippines uses something called the dominancy test to decide confusing similarity between marks.

The Supreme Court ruled that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences discerned using the dominancy test. They saw nothing that would lead to any likelihood of confusion to the ordinary purchasers. The Court of Appeal had correctly applied the dominancy test. However, the Supreme Court arrived at a different conclusion. In particular they said:  

    • LANE is not the dominant feature of the marks LOLANE and ORLANE
    • There are notable differences in the way the marks are written or printed, given the LOLANE font graphics
    • The marks do not sound alike. The prefixes OR- and LO- do not sound alike. The suffix of LOLANE is pronounced as “LEYN” while the suffix of ORLANE, being of French origin, is pronounced as “LAN”.
    • While there is a possibility of aural similarity when certain sectors of the market would pronounce ORLANE as “ORLEYN”, it is not also impossible that some would also be aware of the proper pronunciation.
The Supreme Court was able to find dissimilarities in the sound and look of the marks. whilst the lower court's had focused only on the spelling of the suffix.

 

Monday, May 1, 2017

Protecting cultural IP

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Indonesia worries about foreign appropriation of its cultural assets.  A longstanding dispute with Malaysia over traditional batik designs, as well as songs and dances which both countries claim as their own is an example. Another is Toraja Coffee, a coffee from Sulawesi, but the name was appropriated into a Japanese brand some years ago.  See here for more.

Now Indonesia has decided to start a catalogue of its cultural assets to prevent IPR infringements by other countries. The Tourism Ministry and Indonesian National Archives issued a statement announcing the step last week. Indonesian National Archives Chairman Mustari Irawan said "We don't want other countries to claim our tourism assets, so we need to keep a complete catalogue." The intention is for the catalogue to capture a wide range of Indonesia's cultural assets. Some will be tourism focused, others driven by IP ownership.

Of course one of the reasons Malaysia and Indonesia share similar cultural traditions is that the two were for hundreds of years part of the same, but largely forgotten state, the Sriwijaya kingdom which dominated SE Asia a thousand years ago. So in one sense modern national legal barriers create disputes over what should be commonly owned concepts. The Japanese use of Toraja has been equally sensitive partly because it is alleged that Japanese traders and farming technology helped rebuild the failing Toraja coffee industry. "A well-kept and well-organized catalogue will prevent misuse of the country's assets," Mustari said reflecting the modern nationalistic approach.
 
Indonesia does need to do more to protect its diverse cultural heritage, as a huge multi ethnic archipelago. The register won't technically stop others from trying to capitalize on these assets. The real solution is for local groups to commercialize themselves, which creates the value and thus, IP creation, ownership and protection.