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Saturday, July 26, 2014

Philippines IPO decisions forgiving of delays







IP Komodo has noticed a number of decision reports from the Philippines where the IP holder taking action has not always acted swiftly or effectively, but substantive justice is still granted.

In the case of Total SA v Bryan Distributors & Services, Total had sought numerous extensions of time to oppose a mark, yet still failed to oppose in time. It is not clear why or whether there was an error. The end result was that Bryan got a registration for PROTEC covering lubricants, a similar mark to Total's PROTEC mark.

Later when Total filed to cancel Bryan's mark, Bryan countered with an argument of inexcusable delay and that they should have dealt with this at opposition stage. The IPO's Bureau of Legal Affairs (BLA) held that delays and failure to oppose do not prevent cancellation actions being brought and found for Total that they had a prior right and cancelled Bryan's mark.

The case is notable for the fact that the IPO's BLA so starkly contrasts with the Philippines court system where endless delays, frequent procedural challenges and pointless challenges make getting substantive justice extremely difficult.

Friday, July 25, 2014

Copyright blues hit karaoke clubs in Jakarta


5 Jakarta karaoke clubs have been implicated in a racket to  illegally download and compile pirated music videos for display in karaoke music clubs in the capital.  The clubs are owned by some well-known personalities. A criminal copyright raid was conducted in Tanggerang west of Jakarta on the content supplier to some 75 karaoke clubs The police seized computers, laptops, DVDs and various documents and one arrest was made.  News reports suggest this is a longstanding practice, with this supplier in operation since 2008, and that the clubs purchased the music videos each month, so the supplier essentially earned all its money from piracy.

The detainee is to be charged with distribution under the copyright law and possibly money laundering. The case was initiated after a rock musician Moldy from Indonesian guitar band Radja reported the misuse of his songs and videos. He claimed that his record label was cutting his earnings due to the prevalence of pirated music taking away sales. An attempt to discuss the matter with the clubs did not succeed so a complaint was filed at with MABES, the national police in January.
 
Although the supplier is the primary infringer the karaoke clubs were implicated as secondary infringers. The 5 karaoke clubs involved are high profile and have agreements with the supplier which may be material.
 
Copyright piracy is one of the only areas of IP that sees any enforcement in Indonesia, mainly at the behest of the strong local music industry.


Thursday, July 24, 2014

Publishing piracy in the Philippines


The Intellectual Property Office of the Philippines (IPOPHL) has urged Filipino students to stop illegally copying their textbooks. This is part of a nationwide education campaign to reinforce public awareness of the IP code and copyright rules.
 
The 2014 school year has just started. In various cities there are various photocopy shops which can be used to reproduce books and other printed course materials for students. IPOPHL said that although awareness of copyright was high in the country it is limited to DVD and CD piracy and not related to books. Data from a market survey was cited indicating that 46% of photocopy shops in Metro Manila will copy entire books on request. Most are located in or near educational campuses. In May 2014 the National Bureau of Investigation conducted raids against 3 shops at UP Shopping Center in  Quezon City; Nayumi Copy Center in Manila and Express Copy Shop in Pasay City on behalf of a local publisher, Rex Books.
 
Textbook piracy is always a controversial subject with student budgets cited as a justification. But large scale commercial copying by copy shops clearly remains a commercial IP crime.

Tuesday, July 22, 2014

Pharma Anton Pillar raids in the Philippines





Few civil search and seizure orders are made in SE Asian countries so a Philippines pharmaceutical patent case is a great example of its use. Etoricoxib is an anti-inflammatory drug made by international pharma company MSD (a.k.a. Merck & Co. Inc. in North America). Etoricoxib is patented and protected in the Philippines by a patent valid until 2022.

MSD began a civil litigation case against infringers of its patent. A civil search and seizure request was filed with the Manila Regional Trial Court Branch 24. The order was then executed through raids. This involved both the court sheriff and the Philippine National Police's Criminal Investigation and Detection Group. The raids took place in June at Mark Ericson and Ferma drugstores in Rizal and Isabela provinces. The Sheriffs seized the infringing medicines which were branded Torico and Xibra which are believed to infringe the Merck patent.

The matter will now return to the Manila Regional Trial Court for the civil case to continue. 

Sunday, July 20, 2014

Thai World Cup rights saga decided but uncertainty remains


 


The World Cup is over - Germany won through sheer strength and more shots on goal; Argentina were brave and brilliant losers. A little like the Thai broadcast rights saga - the Thai government won with muscle and money, the rights holder tried valiantly and will fight another day.
 
RS Plc secured the broadcast rights for the 2014 FIFA World Cup's 64 matches. The Thai National Broadcasting and Telecommunications Commission wanted to apply something called the ‘must-have rule’ under the Frequency Allocation Act and the Broadcasting Act to the World Cup. This obliges a fixed number of sporting events to be shown on free TV. RS offered to show some games for free. The dispute went to court - see here for background. In the end, the National Commission agreed to pay Bt427 million to RS for the broadcast rights for all the World Cup 2014 matches.
 
The court case however rumbled on all through the tournament and the Supreme Administrative Court decided in principle that the must-have rule is law and is not trumped by IP rights. Commentators say the must-have rule violates the Intellectual Property Act, which provides to broadcast rights holders the exclusive right to manage their broadcasts freely. This makes it a WTO TRIPS breach potentially as well as opening Thailand up to more IP rights criticism internationally.

Sports organisers are concerned their broadcast rights might be violated. So Thai prices to buy these rights could be pushed up, as rights holders cannot ensure their broadcast signals are transmitted only in the granted territories because free to air signals can often be accessed elsewhere. 

Thursday, July 17, 2014

Customs seizures in the Philippines - local brands too!

The Philippines Bureau of Customs made some interesting statements about another Customs seizure. More border seizures of goods from China illustrate how widespread counterfeiting is and the trade with China being the predominant problem for SE Asian countries.

Last week the BOC confirmed they had confiscated P556 million worth of counterfeit products various brands, including Nike, adidas, H&M, Prada, Aeropostale, Michael Kors. Also seized was footwear bearing the local brands Onesimus and Una Rosa. The goods were all misdeclared as unbranded.

The interesting part is that Customs expressed concern about Filipino brands being counterfeited. "What is alarming to us is that even local brands are victims of counterfeiting which will cause more harm to our entrepreneurs, causing them to become unprofitable and unproductive, which, in the end, may threaten hundreds of jobs," said Willie Tolentino, BOC's  Enforcement and Security Service director.

Its great that they realise this, but worrying that they may have thought that only foreign brands are affected!

Tuesday, July 15, 2014

Indonesia considers plain packaging for alcohol

Indonesia's government is mulling the use of plain packaging for alcohol, in the latest in the plain packaging debate. Some commentators have argued that government attempts to remove trademarks and limit packaging in areas like tobacco will lead to the same for less contentious products like alcohol, cosmetics and so on.

Indonesia already entered the tobacco plain packaging debate by filing a case at the WTO against Australia objecting to its plain packaging laws. At the same time it has regulations in place to limit trademark use on tobacco products - for more on these conflicting policies see here.

Now the government proposes to limit labelling on alcohol in an attempt to reduce alcohol consumption. The Deputy Trade Minister announced that regulations were being prepared and would apply to all alcohol content above 20%. There has certainly been a rise in spirits consumption as the country's middle class booms, leading to some health concerns about consumption. In general Indonesia being a Muslim country has relatively low levels of spirits consumption though.  Wine is limited due to high import taxes, but local and imported beer is widely consumed. These will be exempt.

A more serious problem is locally hand made (and unregulated) spirits like arak. And more seriously locally made spirits which are deceptively passed off as imported brands and periodically cause deaths - most recently last year on the holiday island Gili Trawangan off Lombok where methanol laced vodka killed tourists.

At this stage it is not clear if the rules will merely limit labelling space or whether like the tobacco regulations they will interfere with trademark use and registration.

Of course this is from a government which is leaving office in October, to be replaced by another, the result of which will be known after this month's presidential election results. But other sectors are seeing a rush of new rules in an attempt to finish the current government's work.

Sunday, July 13, 2014

Patent enforcement in Thailand

A Thai company Soi Ha Inter Group Co., Ltd lost several patent invalidations against Honda Motor Co patents at the Central Intellectual Property and International Trade Court.

The case began with a criminal action by Honda through the Department of Special Investigations against Soi Ha for importation and distribution of mini 4-stroke engines which Honda asserted infringed its patents. Thailand is unusual in having a criminal patent enforcement system. As often happens to counter attack,  Soi Ha filed a civil case to invalidate three of Honda’s patents. The IP/IT Court made its decision on 26 March 2014 dismissing the case.

The Court ruled that the patents were valid. Weak evidence of lack of novelty and obviousness was presented by Soi Ha (merely going to general principles about engine parts from textbooks which did not even concern technical issues or in-depth academic principles or analysis). Further the patents were clearly capable of industrial application.

Thailand is developing a relatively strong and well organized patent enforcement system, and for mechanical patents the criminal system is working quite well.

Thursday, July 10, 2014

Indonesian pharma counterfeits


The Ministry of Heath’s Food and Drug Monitoring Agency (BPOM) has undertaken a study of internet sales of drugs, traditional medicines, health supplements, and cosmetics. They found 302 websites selling fake items. The websites led to 58 businesses selling fake goods in Jakarta and 14 other cities.  Apparently they have seized some 1.3 million pills, traditional medicines, health supplements, foods and cosmetics and through the Ministry of Communications closed down 287 websites selling the fakes. The drugs included not only lifestyle products but cancer and heart disease drugs. BPOM say that the most commonly counterfeited drugs are antibiotics, analgesics, antihistamines, hormones and steroids, both patented and generic. BPOM has been conducting a campaign in 2014 called Operation Pangea to target fake health related products.

BPOM regularly announce such programs and cite wonderful data. However filing an actual complaint with them for action is harder than this would suggest. Their press releases are an excellent summary of the state of the market. However since counterfeiting cases almost never proceed through the (now almost completely non functioning) criminal prosecution system, presumably the vendors are back in business.

Monday, July 7, 2014

Trademarks data in ASEAN

The following data on trademark applications has been provided to the ASEAN secretariat by various SE Asian IP offices. NR percentages means Non-Resident i.e. foreign filings.

 
 
2010
2011
2012
Indonesia
Multi class
53,196 (5% NR)
53,106 (NR = 5%)
62,455
Thailand
Single class
37,656 (NR = 34%)
38,950 (NR = 40%)
44,963
Philippines
Multi class
16,838 (NR = 47%)
18,611 (NR 43%)
20,202
Singapore
Multi class
30,481 (NR = 79%)
34,928 (NR = 81%)
36,401 (NR = 82%)
Vietnam
Multi class
28,237 (NR = 24%)
28,237 (NR = 21%)
29,578 (NR = 23% )
Malaysia
Single class
26,370 (NR = (50%)
26,833 (NR = 60%)
 

Trademark statistics are notoriously hard to interpret and compare. Some countries have multi class applications - like Philippines and Singapore. So naturally their count will be lower than the single class markets like Thailand. And it depends how the data is counted in each case too.  So the numbers are not very useful for comparison.
 
A few facts can be gleaned. Local Indonesian applicants file vast numbers of marks. Data from Indonesia's IPO is however notoriously unreliable and the IPO's count of foreign applicants is certainly far below the real number. However relatively low levels of FDI in the non resources part of the economy probably does equate to fewer foreign filings than in other countries (however not to the degree this data suggests).   

In general one can see an upwards trend everywhere. In addition another general trend suggested is that the more open the economy (Singapore, Malaysia), the higher the foreign filings. The more closed, or not yet attractive to consumer-focused foreign investors (Vietnam, Indonesia), the fewer the foreign filings appear to be.