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Tuesday, July 19, 2016

Philippines Supremes affirm Madrid

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The Supreme Court (SC) on July 19th affirmed the 2012 accession to the Madrid Protocol. A petition was filed by the Intellectual Property Association of the Philippines (IPAP) against the President's ratification of the Madrid Protocol. See here for previous reports.

The SC unanimously dismissed the petition in which IPAP challenged the constitutionality of the Philippines’ accession to the Madrid Protocol by Executive action, without the agreement of the Senate.

IPAP's concern was alleged to be that foreign trademark applications would be automatically given protection under Madrid without designating resident agents as required by Section 125 of the IP Code. This supposed conflict led to the case. Others suggested it was concern about loss of fees from foreign work.  

In any event Madrid is popular with international companies generally due to simplicity and cost. Many Philippines companies now use it too, to get overseas protection. 

Friday, July 15, 2016

Prada's Indonesia dispute escalates

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Indonesian apparel company PT Manggala Putra Perkasa has quite an array of businesses. They own trademarks including a large number of POLO and RALPH LAUREN brands and logos. They also have a number of BEVERLY HILLS POLO CLUB marks and also PRADA marks. They operate a large number of clothing lines under these brands such as the shop pictured.

At present, they are in the middle of a longstanding trade mark dispute with Prada S.A. Prada filed a cancellation action against PT. Manggala Putra Perkasa's registrations for the PRADA mark in class 18 and 25 on the basis that Manggala's marks are similar with Prada's well-known mark. Prada won, but an appeal is pending.

Concurrently, PT. Manggala Putra Perkasa sent warning letters to Prada S.A's distributors in Indonesia and also reported the distributors to Directorate of Investigation and Disputes at the Indonesian IP office.  They claimed the distributors' activities to import and distribute products bearing the (genuine) PRADA mark have resulted in damage amounting to IDR 51.4 billion.

This is one of a number of entrenched trademark piracy cases, where local companies have built large successful business based on early registration of foreign marks. This dispute shows that where there is a large successful business behind a pirate mark that IP holders should expect the defendant to fight back.


Monday, July 11, 2016

Vietnam delays Penal Code revisions

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Vietnam enacted its new Penal Code in 2015. It sought to improve penalties, to lower thresholds for certain types of liability, and to widen liability (to companies for example) for IP crimes. However the government was forced to suspend implementation. It was intended to be effective from 1 July 2016 but this has been postponed. The reason is that around 90 technical errors were found recently. Now the National Assembly is reviewing the code again and it will be revised then a new date for its effect given.

Countries frequently struggle with the increasing complexity of new laws conflicting with old ones. This allegation has been raised in Vietnam often before. It is good this law was caught and inconsistencies can be ironed out before it came into effect.

Wednesday, July 6, 2016

ASEAN data privacy/protection regimes

Image result for dataThe development of data protection regulations in ASEAN (Association of South East Asian Nations) so far is been patchy. ASEAN has committed to harmonize legal infrastructure for e-commerce in the Roadmap for Integration of the e-ASEAN Sector. One of the targets in the Strategic Schedule for the ASEAN Economic Community (AEC) is to adopt best practices/guidelines on various cyber law issues including data protection.

Singapore, Malaysia and the Philippines are the only countries with specific data protection laws.

Indonesia, Myanmar and Vietnam are countries with data privacy requirements only as part of their general electronic systems and transaction laws.  In the case of Indonesia, change is afoot as the government rolls out regulations pursuant to its 2008 Electronic Transaction and Information law.  The Indonesian government has enacted two regulations on registration requirements for electronic systems operators as well. A new national Cyber Agency is proposed.

Vietnam's Information Security law came into effect on 1 July 2016.  The law contains annual inspections of information systems by the state.  The implementation of this requires further regulations. One concern is that inspection or registration requirements may be perceived as veiled attempts by a State to pry into stored personal data using the very law that is meant to secure personal data; another concern is the possible effect of clamping down on internet freedom. 

Indonesia and Thailand have circulated draft data protection laws.  It is important to monitor these bills through the legislative process.  One area of confusion for Indonesia is how one reconciles the data protection law (when enacted) with the data protection provisions in the pre-existing IT laws.  In the case of Thailand, the bill is not likely to be passed into law in the foreseeable future nor is the government infrastructure ready to implement the law yet, even if passed.

Cambodia still has not announced plans to enact data protection regulations. 

Businesses operating in the ASEAN region have a tricky task to keep on top of the differing regimes and developments. 

Friday, July 1, 2016

New Thai Trademarks Act

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The new Trade Mark Act was published in the Royal Gazette on 29 April 2016 and will come into force in Thailand on 28 July 2016.  The new Act brings several changes, including the long-anticipated accession to the Madrid Protocol. 

Significant changes under the new Act are :
1. Sound marks: The new Act allows registration of sound marks, provided that they are not directly descriptive of the goods, the natural sound of the goods or the sound arising from the functionality of the goods.
2. Multi-class applications: Multi-class applications will be available.
3. Time frame for dealing with office actions and oppositions: The allowed time frame for dealing with office actions and oppositions will be reduced from 90 days to 60 days.
4. Association of marks no longer required: Association of marks will be abolished. This will affect all associated marks under the previous Act as if they were not registered as associated marks.
5. Partial assignment: Assignment either for the whole or parts of the goods will be allowed.
6. Official fees: Official fees, particularly for filing, registration and renewal will be increased.
7. Renewal grace period: A grace period for renewal of six months from the expiry date will be available. A 20% surcharge of the official renewal fee is required during the grace period.
8. Refilling: The new Act provides an offence for the unauthorized refilling of genuine packaging or container to mislead consumers about the origin of the goods.
9. Madrid Protocol: The new Act allows for international trade mark registration under the Madrid Protocol.  The accession to the Madrid Protocol will require a separate Royal Decree which is expected to be issued in Q4 of 2016.

Monday, June 27, 2016

Public outcry over fake vaccines in Indonesia

Following a police investigation and discovery of a counterfeit vaccines network across Indonesia a public outcry is bringing politicians, bureaucrats and health organisations into the fray. 

The police uncovered sales in Central Java, Jakarta and Riau. 13 arrests were made, including factory operators, distributors, couriers and label makers after raids across Jakarta and surrounding areas of West Java last week.  Two further Central Java distributors arrested have apparently been operating for 10 years. Pictures of the couple's lavish lifestyle went viral on social media. Suspects are to be charged under Health and Consumer Protection Laws. The Jakarta raids netted 195 packages of hepatitis B vaccine, 221 bottles of Sanofi's Pediacel combination vaccine, 364 bottles of measles vaccine, 81 packages of polio drops, 55 snake anti-venom packs, along with sales invoices and vaccine manufacturing equipment.

Various hospitals, public health clinics and pharmacies have been involved in the investigations. Jakarta's mayor Ahok has ordered the city's Health agency to inspect public hospitals, following reports of the availability of fake vaccines in the capital's hospitals. Testing is ongoing, some fakes are believed to contain harmless liquids, but the public have been scared, because many are vaccines for children. 

The Minister of Health has tried to downplay the issue, citing that only 1% of drugs are fakes. However health and consumer groups have made statements to the press about the fact that this problem is common knowledge in the country, that Indonesia is a haven for fake medicines. Government departments have been accused of gross incompetence by political parties. The Ministry of Health's BPOM unit is taking the most flack. BioPharma the state owned drug producer has announced that its supply chain integrity is strong. 

Of course those in the anti-counterfeiting world have long known of this. See here for previous reports. The Indonesian Anti-Counterfeiting Society has spoken about it. The US government mentions pharma makes most years in its 301 report on Indonesia. The real problem is the lack of investigation and enforcement of counterfeiting, the fault of which lies with the police's failure to investigate commercial crimes, the IPO's PPNS department which has virtually ceased raids, and BPOM who tended to focus on fakes drugs in pharmacies only, not going back into the distribution chain. Pharma companies for years were unable to complain about the health Ministry's lack of action, because the same Departments are also their regulatory supervisory bodies.

The current position is that counterfeiting is a growth industry with little government attempt to stop it due to a weak legal system. Several spots in Jakarta are well known for fake medicines like Pasar Pramuka but are notoriously dangerous for investigation and enforcement. Perhaps a public outcry is needed to drive more action by the government. Fake medicines are the worse tip of the counterfeiting industry which prospers due to lax law enforcement offering no deterrent.

Sunday, June 26, 2016

Indonesia civil trademark damages calculations

The Plaintiff Andy Najarudin owns the NAKAMICHI trade mark covering textiles. After discovering sales of counterfeit NAKAMICHI products he sought help from the Indonesia Textile Association. One Harry Sucipto and his business partners had been manufacturing and trading fabrics using the NAKAMICHI mark without authority since 2011.

After a failed mediation by the Association, the Plaintiff reported the Defendants to the police and filed a criminal case with the West Jakarta District Court. The District Court found the Defendants guilty of trademark infringement so sentenced then to three months imprisonment and a fine of IDR 30 million (USD2,200).

Then the Plaintiff filed a damages claim with the Central Jakarta Commercial Court as a result of the infringement. They claimed actual loss damages of IDR 5,178,765,000 (USD 380,000) as well as a total of IDR 20,000,000,000 (USD1.5 million) of intangible loss damages. The Plaintiff provided a comparison of the profits they made during 2009-2013, which showed a significant decrease from 2011 onwards, to support their claim.

The Central Jakarta Commercial Court granted parts of the Plaintiff's claim. They declared infringement of the NAKAMICHI trade mark. The Judges ordered the Defendants to cease their infringing activities and to pay a total of IDR 1.5 billion (USD110,000) in actual loss damages and IDR 1 billion (USD78,000) of intangible loss damages.

The Supreme Court rejected the defendants' appeal, but amended the Central Jakarta Commercial Court's decision removing the intangible loss damages. The criteria to calculate this amount could not be determined they said.

It is rare to see a case where the plaintive puts in evidence of its losses. Typically, judges get very little real evidence to assess damages. Plaintiffs do frequently make outlandish claims of intangible losses but often these are refused. Damages here of IDR 1.5 billion (USD110,000) seems broadly reasonable for a textiles business. In Indonesia legal costs are never awarded.

Thursday, June 23, 2016

Philippines implements data protection rules

Under the Data Privacy Act of 2012 the National Privacy Commission administers and implements the Data Privacy Act. It has now established implementing regulations.  These cover:
  • Data Privacy Principles (e.g. Transparency, Legitimate Purpose and Proportionality)
  • Processing of Personal Data (e.g. purposes, methods, data integrity, data sharing)
  • Security Measures for Data Protection (privacy officers, Accountability and Transparency, Physical security)
  • Government Data Security
  • Rights of Data Subjects
  • Data Breach Notifications to the Commission
  • Rules on Outsourcing and Subcontracting
  • Registration, Adminsitration and Penalties
This comes after a massive recent breach - details here. Companies will need to review their operations immediately for compliance.