Fake vaccines in Thailand

A Thai provincial clinic is accused of dealing in fake Moderna vaccines. The police raided Kularb Clinic in Kabinburi, which is 200km west of the capital, Bangkok. 

Customers complained after being charged THB1,500 (just under USD$50) per shot. Customers were not shown packaging or batch details and expiry dates and they found no side effects. This led to suspicions and a complaint to the police. The Moderna vaccine is not approved by Thailand’s FDA yet. However there are apparently Moderna mRNA vaccines available on the black market.

The police raid seized no actual Moderna vaccines but the owner Kularb Yamnok was arrested. The police claim to have found other illegal medicines at the clinic which has now been closed down.

Vaccines and IP in SE Asia

Citing inequitable access to vaccines, India and South Africa have called for waivers on provisions of the TRIPS Agreement for vaccines against COVID-19. President Biden has agreed to support a waiver.  The clamour for vaccines free of IP restrictions is growing.

A separate World Health Organization (WHO) program called C-TAP is seeking to secure licenses for vaccine production. But no company has joined it yet. 

The demand for more vaccines in SE Asia is huge. 600 million people need them and under 5% have had them so far. In the Philippines the Coalition for People’s Right to Health issued a statement asking the Philippines government to support the waiver.  They state that a TRIPS exemption may be a “first step to incentivizing or revitalizing national industrialization”.

Unfortunately, manufacturing COVID-19 vaccines is not solved by IP access alone.  Production of vaccine is highly complex and only a handful of companies in SE Asia can even make them.  Secondly, regulators still have not approved many of them; so making them doesn’t ensure they can be used. As seen in the US, their short shelf life means a very efficient system is needed to avoid doses going to waste. Thirdly distribution and storage is not simple, most need refrigeration to different degrees.

The actual process of vaccinating hundreds of millions of people itself is complicated. McKinsey have produced a detailed analysis of the issues in low and middle income countries here. Many governments in the SE Asia region are doing well at rolling out initial vaccine programs, but the complexity of scheduling, processing (which requires a large IT infrastructure too), as well as staffing, training,  will become more and more challenging in large general populations and especially in remoter corners (eg. islands) of the region. Procuring production or vaccine stocks is one part of a much larger and more complex process.

There is a second commercial issue. It is clear that some pharma companies in the region would like to pursue the removal of IP barriers in order to use these products to build up a vaccine manufacturing capability for the future. In effect to leap frog having to invest and develop products on their own. No doubt international vaccine companies are concerned about this commercial risk to their own future.

Waiving IP on vaccines does not guarantee delivery to populations; it is one step only, out of dozens that a country needs to solve.  Apart from a TRIPs waiver, compulsory licensing and import and other parallel import options (which pharma companies are permitting with different pricing) also offer solutions to delivery of large volumes of vaccines. The real issue is the global capacity for vaccines was never going to be enough for a quick roll out. The delivery of medicines needs more than just IP to be effective.

Myanmar coup impact on trademarks

It is now six weeks since the coup in Myanmar when the military took control of the country.

Protests against the military junta are continuing and the situation is escalating. Now reprisals from the police and military are becoming more violent. Added to this, citizens are dealing with many other obstacles affecting their daily lives – restricted access to the internet, power cuts, home-working, banking access, not to mention the continuing impact of COVID-19.  

At this time, the military coup has no effect on all marks which have been refiled during the IP Department's Soft Opening Period.  It is yet not known if the deadline for refiling marks will be extended after 31 March 2021. 

IP owners need to ensure instructions are sent in the coming days if the deadlines are to be met. Many factors outside the control of IP firms will likely cause blockages and delays.  

Prince Harry and Megan Markle have new trademark woes in the Philippines

 

The Duke and Duchess of Sussex cannot seem to stay out of the news right now. After their UK newspaper lawsuits, the US Oprah interview and a Buckingham Palace investigation comes a trademark dispute in the Philippines over their new ARCHEWELL brand.

ARCHEWELL is the name of the US based organization founded by The Duke and Duchess of Sussex that currently trades as a non profit foundation and media organization. A number of trademarks have been filed by their IP owning company Cobblestone Lane LLC. The name was a replacement for the SUSSEX ROYAL brand they dropped. ARCEHWELL was launched in March/April 2020.

There are several ARCHEWELL trademarks in the Philippines. Gina Agnes Sarabia filed for ARCHEWELL in July 2020 for jewellery, then Victor Martin Soriano filed for ARCHEWELL HARVATERA  in July 2020 in class 3. He also filed for ARCHEWELL alone in classes 3 and 38.  The trademark data suggests the two are closely connected. The first is registered, but in November the Sussexes filed an opposition against the ARCHEWELL HARVATERA application. 

Mr Soriano is quite upset, and has filed another mark ARCHEWELL COSMETICS. He has also taken to Twitter to complain “Archwell is now a registered trademark in the Philippines (And it’s not a former British colony). English laws don’t work here.” He seems to have missed the news that the Sussexes have moved to the US and the companies in question are all American. 

Of course the Sussexes launched their brand earlier albeit not focused on these goods. The Philippines has a track record of bad faith applications for famous marks. Examples that went to the Supreme Court are the IN-N-OUT Burger case and DAISO case (see here). Potentially this may follow the same pattern, especially if there are multiple connected parties and many similar marks.  But Soriano has threatened to fight since the brand is not used by the Sussexes on cosmetics. He is certainly a prolific trademark filer. He has a number of brands incorporating LV so one wonders also where that came from... 

Philippines sets up ecommerce counterfeiting MOU

On Monday ecommerce platforms and IP owners signed an MoU in Manila to improve prevention of counterfeit sales on ecommerce platforms. The MOU was jointly prepared by IPOPHL and the UK’s UK Prosperity Fund ASEAN Economic Reform /FSIP project. It brings together ecommerce platforms and IP owners. It establishes a code of practice among online marketplaces, as well as an efficient notice and takedown procedure, to intensify the fight against the sale of counterfeit and pirated goods over the internet. 

IPOPHL reported that counterfeiting and piracy complaints surged to a record-high in 2020. It monitors this through its IP Rights Enforcement Office. Apparently 90% of complaints relate to online infringements.  

The MOU commits platforms to respond in a timely manner, and IP owners commit to taking swift Notice & Takedowns steps and trying to stop counterfeits at sources.  It includes a feedback mechanism too. 

This is the second MOU in the region after the Thai one signed in January (see here). Ecommerce is booming in the SEA region, with Covid exacerbating a shift from retail to online purchasing. IP owners and platforms are overwhelmed by the volumes of IP infringements. MOUs are self regulation tool that allows improvements to a bare regulatory regime which cannot adapt quickly enough to the boom in digital trade. Over time more MOUs are likely and perhaps even updates will occur as new issues arise. The eventual hope is that ASEAN will pick this issue up at regional level. 

Myanmar's coup and trademark refilings

Myanmar’s military coup is creating great uncertainty for the country. The IP system is drawing towards the close of the soft opening period. This is the time during which trademarks registered under the old deposit system at the Registry of Deeds can be reapplied for at the new IP Office.  This process is due to complete on March 31st after which no more refilings can occur. At that point the full Trademarks filing system is due to open for new applications. 

Right now the e-filing system continues to operate for refilings. Due to Covid, IP attorneys are mainly working from home. So at present IP owners can send their instructions and continue to refile online. 

It is not clear whether the coup will cause any interference with the trademark soft opening period or the development of the IP system generally. IP Owners need to monitor for news.  It is strongly recommended not to wait until the last minute (i.e. late March) to submit refiling instructions as any delay may mean missing the soft launch loss the validity of earlier recorded marks.

A further concern is sanctions. If doing business in Myanmar becomes a risk, then trademark filings for foreign companies may become impossible, (as they are in certain other countries under sanctions). Again, a reason not to wait to refile in case the door closes earlier than end March. 

US brand Supreme's dispute over Thai Monk's photo

Thailand’s National Office of Buddhism will challenge an American fashion company Supreme New York, over use of an image of a Thai monk on a new shirt. This is not any image, but iconic late monk Luang Phor Koon who passed away in 2015 and is revered in Thailand. Mystical powers are said to imbue amulets he blessed when alive, even today. He was based at Wat Ban Rai, the famous elephant temple in the centre of Thailand. Wat Ban Rai’s management and his family say they were not asked for permission.  The press reports that the image of Luang Phor Koon was taken in the early 2000s and was sold on cloths to raise funds for the temple in Nakhon Ratchasima province. 

The image is probably protected by copyright, but subsistence and ownership may need to be proven yet.  The Thai DIP issued a press release  clarifying that the image of Luang Phor Koon is a creative work protected by copyright and if it is proved that the Ban Rai temple produced it, then they have exclusive rights. 

Eagle eyed observers have noted the image might be taken before the 2000s as it seems identical with a yant distributed in 1993 (the original talisman/ yantra cloth distributed 1993 to raise funds for the Temple). In addition, some argue that the yant itself is considered a work of applied art, and in Thailand copyright in such works last 25 years after the work was created/published. So it is not clear if the copyright has expired.

The Thai government has said it will issue a complaint to the New York skateboard and hip hop brand founded in 1994. The company sells mainly in US, EU, China and Japan and is in the process of being acquired by VF.  Although this is likely a copyright claim, the commercial use of religious iconography is always a sensitive issue. The image appears on the ‘Blessings Ripstop Shirt’ in Supreme’s Spring/Summer 2021 collection.  The image also features what is call yant, a sacred form of tattoo used by Buddhist monks or Brahmin holy men.

Social media is buzzing over the issue in Thailand and more widely in SE Asia. 

The challenge of complex IP disputes in the criminal system in the Philippines

A Manila Prosecutor has thrown out a utility-model infringement and unfair competition complaint. A criminal case was filed by TouchPay payment system owner Manila Express Payment Systems Inc against the officers of BTI Payments Philippines and Electronic Transfer Advance Processing Inc. (eTAP). Both are also online payment and processing companies.

The case began with a raid by the National Bureau of Investigation (NBI) after a court granted search warrants against the two defendants in July 2020 on the basis of confusing similarity in the appearance of the automated payment machines.

The case passed to the Department of Justice but the Prosecutor rejected the complaint as prematurely filed. Criminal actions for utility model infringement may only be filed for repeated breaches of Section 76 (which covers Civil Infringement) of the IP Code (Republic Act 8293), after a civil judgment. 

Under the unfair competition charges the defendants were accused of misrepresenting the IP owner’s goods or services as their own. More specifically passing off eTAP’s Pay&Go automated payment terminal as the IP owner’s TouchPay machine. But the prosecutor decided there was not sufficient evidence as the physical appearance of eTAP’s Pay&Go machine looks different so no end consumers were misled. 

Utility model and unfair competition cases are extremely hard cases to press through any criminal system. A number of SE Asian countries allow criminal remedies in such cases, but in most developed countries a case like this would be filed through civil courts for an injunction and damages. Technicalities need a more detailed examination that prosecutors and criminal courts should be expected to spend time on. 

UK signs FTA with Vietnam adopting EU IP provisions

The UK has signed a Free Trade Agreement with Vietnam which came into force on 1 January 2021.  A tiny IP element is included. The UK FTA essentially adopts the EU Vietnam FTA, which came into force 6 months earlier. So the UK FTA adopts the same IP provisions set out in the in the EU Vietnam FTA IP chapter. 

There are several minor variations all relating to GIs which the UK doesn't generally have a strong policy on. Firstly the GI provisions are to cover “Irish Whisky/Irish Whiskey/Uisce Beatha Eireannach” and “Irish Cream”. These GIs for products produced throughout the island of Ireland, including in Northern Ireland which remains part of the UK, but subject to some EU rules under Brexit. Otherwise Northern Ireland Producers would lose GI protection. Secondly the GI for Scottish Farmed Salmon will continue to have protection in Vietnam.  

The other amendment is to remove certain provisions which grandfather certain narrow local use of Champagne  and several cheese GIs. 

The main purpose of the FTA is not however IP related (since IP is already well covered in the EU one), but to grow UK trade with Vietnam. Education, renewables and healthcare are key sectors, along with general infrastructure. 

Vietnam IP law amendments

Vietnam’s IP law is undergoing amendment. Multiple Ministries responsible for IP issues hosted a workshop to consult on the draft law with IP owners, IP firms and IP associations last week. The draft law amendments will help Vietnam comply with its new treaty requirements under the EU and UK Vietnam FTAs as well as the two CPTPP and RECP treaties. 

Some of the amendments include:

a. Copyright – a means to resolve royalty disputes with CMOs, clarity on parallel imports of copyright works and exhaustion of rights of IP owners to prevent subsequent distribution, clarity on exceptions and limitations. 

b. Trademarks – expanding the definition to include sound marks, various procedural matters. The issue of bad faith was raised in the consultation. 

c. Patents: a national security exception on certain patents proposed to be filed abroad, compensation for regulatory approach delays for pharma patents 

d. Designs – partial product designs to be allowed; various procedural amendments

e. IP Enforcement of IP rights: a major proposal is to restrict administrative action for IP infringement. 

The timeline will likely be another year to enactment of the law, with the next step being finalizing the draft following the workshop. The UK’s Prosperity Fund FSIP program and the British Embassy also supported the workshop. 

Ecommerce IP enforcement in SE Asia

E-commerce trade is booming in South East Asia. The pandemic has accelerated online shopping. Chinese e-commerce giants Alibaba and JD have invested in the region’s platforms and there are many strong well financed local operators (like Tokopedia and Shopee).

Meanwhile counterfeit goods continue to plague platforms. Each country has its own patchwork of different rules. Different ministries may be responsible in different countries. Different regulatory approaches are taken. There is no consistency. IP owners are increasingly frustrated that they have to invest in different, complicated takedown systems management for each country in South East Asia.

The typical ISP historic pattern is playing out. Initially platforms were responsible in creating building takedown systems. Then the boom began and platforms proliferated. Regulations started to catch up. However ecommerce sales have moved on. New methods are emerging (liveselling, influencer sales, WhatsApp groups etc).  IP owners now expect large platforms to do more to proactively monitor and manage illegal content on their platforms. Technology solutions have not materialized. Platforms are using the age-old ignorance of content argument. So once again the regulations are behind the curve.

A new approach is being tried. In several countries MoUs have been initiated by Intellectual Property Offices and other bodies. The British government is supporting some. The Philippines IPOPHIL is soon to sign one with IP owners and platforms;  Thailand’s DIP signed one with IP owner representatives on 11^th January. A socially distanced signing ceremony was performed (see photo) These MoUs work in different ways in different places. Some oblige platforms to be more proactive. Others give the IP office Enforcement  departments powers to step in to online enforcement. 

MOUs may fix some short term problems, and they can be faster than new regulations. But they do not cover every eventuality, and new trends are not caught. Countries may need to execute multiple MOUs, every year or two, to keep up. Some countries are still at a basic level e.g. Indonesia has only a basic takedown system.  At present ASEAN’s IP strategy does not cover ecommerce IP enforcement.  IP owners are increasingly demanding a consistent regional approach, to reduce the cost and complexity of 10 countries running different systems.

SE Asian Nation Brand values

In December Brand Finance published its Nation Brands 2020 ranking, which measures countries' national branding. The report and rankings explain how a country positions and promotes itself, calculating the value of its Nation Brand. 100 countries are covered.  Broadly the data matches economic heft, but many countries punch above their economic weight where they have soft power.  Brand Finance use 7 factors - business / trade; governance; international relations; culture / heritage; media / communications; education / science; and people / values.  A Nation brand translates into: more investment, stronger human talent, exports of goods and services from the country and tourism. Of course 2020 noted a huge negative value drop for most Nation brands due to the pandemic; almost everywhere. 

In SE Asia most countries’ Nation brands were relatively static as would be expected. Several fell more – Malaysia and Philippines - due to local factors reducing their attractiveness. The star was Vietnam which bucked the worldwide trend. Its Nation Brand rose in value by a huge 29% taking the country up a 9 places. This is explained by the shift in manufacturing from China driving growth, opportunity and attractiveness. 

The ranking of the values of SE Asia's Nation brands are as follows: 

17 Indonesia – down 2 places 

27 SG – same as 2019

28 TH  same as 2019

29 MY  down 6 places

31 PH  down 6 places

33 VN  up 9 places

69 MN down 1 place

99 KH up 1 place

A separate analysis by Brand Finance measures the pure brand strength, combined with the Global Soft Power Index; in effect this reduces the impact of economic size. This year that top 10 includes Singapore which of course punches well above its economic weight in soft power. 

This shows the impact of brands, and is a lesson for businesses trying to build brands and for governments trying to encourage and incentivize IP owning companies. Brand investment creates soft power which leads to  greater economic opportunities. This works for SMEs, MNCs and even countries. 

Counterfeiting and Illicit trade in ASEAN

A new report called Tackling Illicit Trade in ASEAN Advocacy Paper, 2020 by the EU-ASEAN Business Council and the Transnational Alliance to combat Illicit Trade (tracit.org) sets out some stark data on how counterfeits fit into the illicit trade world. 

Illicit trade comprises all kinds  of cross border illegal trade from smuggling, to narcotics to wildlife and of course counterfeit goods are a major part of this. The problem comprises both into ASEAN region trade and intra ASEAN member states.  Some key features of the report relevant to anti-counterfeiting are set out below:

• Covid has had an impact in 2020 – 150,000 counterfeit 3M masks were seized in July 2020 in Vietnam. Philippines Customs reports $5M of counterfeit medical and PPE products this year.
• Ecommerce is a huge driver of the counterfeit trade. The  UNODC reported 2500 websites offering counterfeit sanitizer, masks and medical supplies. Major ecommerce sites like Shopee, Lazada, Topkopedia and Bukalapak are criticized by the US and EU for failing to tackle unauthorized sellers, counterfeit goods, rogue domain names and false advertisements. Hidden trader identities are a major barrier to stopping the problem. The boom in small-parcel postal services is the main delivery mechanism.
• Pharmaceuticals – the tarde in counterfeit pharma products is estimated to be $4.5 bn today. The problem is especially bad in Indonesia, with a growing online sales challenge. The Pharmaceutical Security Institute reported on 673 cases in Philippines, Thailand and Indonesia.
• Some sectors like tobacco and alcohol are hit by the triple whammy of smuggling, counterfeiting and refilling, leading to massive government tax losses (JTI estimates Malaysia lost RM1 billion in cigarette tax in 2020). The WHO asserts that ASEAN has the highest illicit (smuggled, refilled, counterfeit) liquor consumption in the world – a massive danger to consumers.
• Particular consumer sectors suffering from counterfeits in ASEAN include toys and auto parts, with these cases almost always being imports from China – according to examples like counterfeit BMW parts in Thailand.
• Agrochemical counterfeits are largely sourced from China and India according to seizures in Cambodia, Vietnam Malaysia, Philippines and Thailand. Many are very dangerous.
• China remains the main counterfeit goods source due to its proximity and shippers’ use of Free Trade zones to support the trade. Local counterfeit manufacture occurs in Malaysia, Thailand and Vietnam, including repackaging.
• The total counterfeits market in Southeast Asia is estimated to be worth $40Bn
• Weak enforcement mechanisms, poor sanctions and low Customs seizures in ASEAN countries make counterfeiting easy and attractive for criminals

The full report is available here 

RCEP Trade deal signed - a new standard for IP in Asia Pac?

Sunday's announcement by 15 Asia-Pacific countries of the signing of the Regional Comprehensive Economic Partnership (RCEP) was heralded as the creation of the world’s largest trade bloc. The parties are the 10 ASEAN countries along with China, Japan, South Korea, Australia and New Zealand.

The treaty contains a comprehensive 44 page IP chapter. Large parts of it repeat global norms that are set out in TRIPS. After all, bringing Laos and Myanmar up to Australia's and Japan's IP levels requires setting out all the basic norms. There are transitional provisions and different timelines for least developed countries. RCEP will take effect after 6 countries ratify it. Over the coming years changes will start to appear in domestic IP laws, regulations and practice.

Different trade sectors will have different views on the value of the IP provisions in Chapter 11. Setting out a common standard for GI protection may go some way to resolving the tug of war in Asia between the US and Europe.  Every country will now have to include experimental patent use allowances (Bolar provisions). There are special rules on textile designs, as well as a set of provisions on Genetic Resources, Traditional Knowledge, and Folklore. A common standard for Unfair competition may help countries who have weaker laws in this area.

The enforcement provisions are extensive. Many are similar to TRIPs, and the introductory provisions requiring effective protection without additional specifics, don’t advance the subjective view of enforcement obligations taken by different countries. Countries with few criminal cases for commercial piracy and counterfeiting though could find themselves in breach. Attorneys will be pleased that legal fees are to be awarded in civil IP cases.

Overall the RCEP IP provisions are not especially advanced. There are definitely some minor changes that many countries will need to make, some very welcome. It isn't as sophisticated as the CPTPP, or EU FTAs. However it is the first attempt to set common standards across Asia. 

First foreign IP owner Customs seizure in Indonesia

A second Customs IP seizure has occurred in Indonesia. It is thought to be the first for a foreign company. Only a couple of foreign IP owners have secured Customs recordals under the new recordal system so far.  The seizure was at Tanjung Emas, Semarang, on the north coast of Java. Customs Officers seized 185 cartons containing 390,000 GILLETTE branded razors and 521,280 razor heads imported by PT. LBA from China on Wednesday October 7th. 

This led to an application to the Semarang Commercial Court for a request for a temporary suspension of the goods. This was then followed by a full physical examination at Tanjung Emas Customs.  Witnesses from the IP Office appeared and P&G which owns GILLETTE and who filed the case.  This is a significant quantity so probably justifies a civil action. 

One of the challenges of the Indonesian customs detention system is the Legal step requirement following seizure. Not every IP owner can bring civil court proceedings, as they are expensive and time consuming. Even filing a civil case can take time. There are technical legal deficiencies that will exist, given cases would be filed by the local subsidiary not the IP owner. 

It is unclear what kind of case is needed and what cost are justified. A significant unknown is what happens if an IP owner does not file a case.  Customs may be put in a difficult position if there are dangerous counterfeits in the shipment. Conversely IP Owners will have paid a bond and this will then be at risk if they take no action.  Unfortunately the rules are not clear.  

Two seizures have occurred and in the best solution will likely be to settle a case as fast as possible. 

Changes to trademark registrability in Indonesia

In addition to Patent Law changes, the new Omnibus Law has added an additional ground to refuse trademarks into the Trademarks Law. Now, a trademark cannot be registered if it contains a shape that is functional.

This arose from concerns at the IP Office about trademarks filed which contain something which performs a function and is more appropriate for patent or design protection. They looked at the position in other countries including the US, EU and Japan, where this particular ground is basis of rejection. They had looked specifically at cases where functional elements had been fought over in litigation in the US and EU such as the Lego case.  

The 2016 Trademarks Law introduced 3D marks for the first time and a number of such applications have been made. Trademark owners with 3D marks may need to review their applications to see whether they are at risk of refusal.

Vaccines and developing countries' access to medicines demands

 

Vaccines candidates for Covid 19 are at the forefront of the news. A proposal by India and South Africa for the World Trade Organization to suspend the implementation, application, and enforcement of relevant provisions under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) for the COVID-19 vaccine is now creating an IP dispute. India and South Africa have asked the WTO to waive certain TRIPS provisions to ensure access to Covid 19 medicines without IP restrictions. In October the WTO started discussing the issue. 

A number of developed countries have disputed the proposals and counter proposals have been made for licensing of patents to take place. The CTAP system has been proposed. The WHO has launched its Covid-19 Technology Access Pool (CTAP), inviting countries to share data, knowledge and intellectual property on vital, life-saving health products in the fight against the coronavirus. However India has pointed out in the WTO that no pharma companies have yet signed up to CTAP. 

More WTO discussions are due to follow.

An old Indonesian vaccines dispute shows the risks when countries do not cooperate.  The earlier issue arose from the 2005-7 H5N1 avian flu epidemic. A vaccine was created using samples from Indonesia by Australian research based pharmaceuticals maker CSL. However a dispute arose over access to the vaccine. The vaccine was developed using the Indonesian strain of the H5N1 virus, using samples submitted via the WHO. CSL argued the samples were obtained fairly for research, and there are no rights in the biomaterials themselves. CSL further had a contract to work on this and said they were not making a  commercial vaccine. However  Indonesia’s Ministry of Health, worried that ‘pharmaceutical industries of developed countries … produce and patent the products… and sell them back to the developing countries at unaffordable prices. As a result they withdrew from the WHO’s virus sample sharing programme.  

A recent article by Helen Gubby of Stamford University argues the entire biomedical sector should be taken out of the patent system. There is an alternative she argues. The Coalition on Epidemic Preparedness Innovations (CEPI) launched in 2017 at Davos uses public, government and philanthropic funding to create new vaccines through patent buyouts. In essence the R&D is funded, and the IP is acquired. There are also prizes  for access and the IP. CEPI is funding several COVID‐19 vaccine candidates. 

The international community needs to agree a clear structure to avoid lengthy arguments in 2021 over access Covid 19 vaccines. 

Indonesian Patent Law working requirements repealed

Indonesia’s Omnibus law on job creation adds several patent rules. The law mainly focuses on economic reforms to help foreign investment and job creation and has created some concerns over workers rights. 

However an amendment to the Patent Law working requirements has been added into it, following foreign IP owner lobbying over the last year. See here for previous details. Article 20 of the Patent Law contains the controversial working requirements. These require patent holders to manufacture a patented product or use the patented process in Indonesia within 3 years of grant or face compulsory license or cancellation of patents. This has now been revoked by the Omnibus Law.  

A new Article 20 has been added to the Patent Law. Instead of an obligation to make a product or to use the process in Indonesia, now a patent can be implemented in Indonesia in one of the following ways:  

a for product patents - making, importing, or licensing a patented product; 

b. for process patents - making, licensing, or importing products resulting from that patented process; 

c. for method patents - making, importing, or licensing products resulting from the patented method, system and use. 

The risk of compulsory licensing or revocation now only applies to failure to do one of the acts above.  

Previously a system had been used for patent owners to apply for delays to work their patents. This is expected to cease; since it was mainly expected to be used by those who license or import products (which was not working a patent previously). 

The final draft law has not been signed by the President yet. Once it is patent owners should review their patent implementation in Indonesia. Working a patent now has a wider definition, and there is a 3 year period to do that.  But patents that are not used or worked at all may still be vulnerable. 

A second Patent amendment has included in the Omnibus Law. It law also provides more clarification in relation to simple patents. An additional patentability requirement is added, namely the invention has a practical use. Secondly the examination process has been simplified. 

Patents are often seen as critical investment issues so the government hopes these amendments will ameliorate foreign investor relations. 

Foreign research in Indonesia

 

Indonesia is in a paradox over biopiracy. Conducting research in Indonesia and using the fruits of that research overseas tends to inflame nationalism. Repeated examples exist of how foreigners have stolen bio-resources and then commercialized them overseas with little local benefit conferred. The country is struggling to both encourage research but also restrict foreign access.  

In 2018 a University of Copenhagen's Centre for GeoGenetics paper explained how Indonesia's Bajau community (aka. the Sea Nomads) can free-dive exceptionally well due to enlarged spleens that store oxygenated blood during free-diving. Allegations arose that the researchers had failed to obtain government approvals, but still took DNA samples abroad without permits. Another allegation was that the single Indonesian researcher who participated had no subject matter expertise and was mainly used for travel arrangements. The University of Copenhagen's Centre for GeoGenetics asserts it had all the necessary government permits.  

A 2012 example was the discovery of Megalara garuda, (see picture) a giant venomous wasp, from Sulawesi. The dispute arose from a 2012 paper by a University of California, Davis professor and a German researcher. The dispute concerned the level of partnership with Indonesian researcher from LIPI, the National Science Institute, as well as lack of co-authoring of the paper and breach of an MOU between the institutions. UC Davis paid compensation to $25,000 to LIPI and returned one of the samples.  

This is in the context of a new set of rules on Indonesian research being introduced. Some are controversial, such as the ability to jail foreign researchers in breach of the rules (a sign of how sensitive the issue is). However the main issue is that the new National Science Law of 2019 has not yet been implemented with the subsidiary regulations still in draft. This means the permits and requirements in force are still those under the older laws which were those in force when all the earlier scandals arose. The government announced in October 2020 that a new National Board of Research and Innovation (BRIN) was being formed to take on the various old and new functions in the National Science Law of 2019. 

Many research partnerships are in place. However foreigners complain the paperwork is extremely challenging to deal with. Some claim they have had to pay unofficial payments too. Then there are challenges concerning research content. Foreign researchers do not know where the research and study borders are or which research will be beneficial to Indonesia.  The new National Science Law with its heavier politically driven rules and delayed implementation seems unlikely to make the system simpler. 

PetSmart is smarting at UDRP loss in Vietnam

Many WIPO domain name cases are relatively straightforward when a company copies a famous mark. A number of the cases from SE Asia involve a local company/person who’s domain name is too close to a famous foreign mark and there is no legitimate reason for them to have it. Examples are rolex-group.com owned by a Filipino orthaiyahoo.org by a Thai person. 

A case from Vietnam Pet Smart v Pet Mart shows a different type of situation. PetSmart Inc is the largest US pet store company based in Arizona with several thousand facilities. They filed a UDRP case against 3 domain names – PetMart.info, PetMartVietnam.com, and PetMartVN.com.

PetMart Viet Nam Co. Ltd is a Hanoi based pet business. It is not very large but quite popular in Vietnam. It was established in Hanoi in 2012. It sells products and accessories (online and offline) for pets and provides pet-related services. In addition to the Head office in Hanoi, it has 17 stores / branches in Hanoi, Saigon, Da Nang and Hai Phong.

The crux of the decision therefore is whether Pet Mart had a legitimate interest in the domain name. The panelist concluded that they did. He had to balance competing rights. PetMart registered a trademark and they trade in Vietnam. PetSmart had its own marks but these were filed in Vietnam later than PetMart’s. As a result PetSmart could not prove that PetMart were deliberately taking unfair advantage. The marks are certainly quite similar and there is possibility it was set up to piggy back on PetSmart. But the evidence did not show that conclusively.

The case shows the limitations of a UDRP case against a business which has become well established, whether or not it copied the international brand owner. A safer route may be to challenge the underlying trademark itself.

Myanmar trademark soft launch has started with some expected and unexpected teething problems

 

The Myanmar Intellectual Property Department (IPD) has finally begun receiving trade mark applications. The first phase of the opening has begun on 1 October 2020 and is considered a ‘soft opening’ until the new trade mark law comes into full force. During this period, trade marks filed previously under the Registration Act 1918 with the Registrar of Deeds can be refiled. This will secure the earlier date as the priority date, and parties who have been using their trade marks in Myanmar may also refile with proof of use. The soft opening period is to last six months.  

 

A large number of marks have already been filed after a week’s time, and there will be a few days of down time for e-filing system maintenance from the 7th to 12th of October. Unfortunately, a few IT teething problems have been encountered such as files being returned to the wrong place.  One of the forms TM2 has not been created yet, therefore the IPD is proposing that these related marks be filed in April 2021. 

 

Meanwhile the Registrar of Deeds still accepts new trade mark applications, a parallel registration available during the soft-opening period. However, a COVID related problem has also arisen as a Stay-at-Home restriction has been imposed on 28 areas of the Yangon Region. This includes the area where the Registrar of Deeds is located, which is going to make filings challenging in the coming weeks since there is no e-filing in the region.

 

The IPD is expected to open on 1 April 2021. Theoretically, after that day, new trade marks can be filed and the patents and designs registries will may possibly be open as well. Much depends on the new IP laws being ready to take effect with all the implementing regulations, as well as the IPD's own systems and capacity in place. 

 

The IP community in Yangon will surely be busy over the next six months.

 

 

Fake medicines in SEA

A new approach to fake medicines has been launched in SE Asia by the EU’s IP Key SE Asia program. IP Key is an EU funded IP program across SE Asia. They will run a social media campaign to raise awareness of fake medicines in the region. They are using the hashtag #yourhealthispriceless.  IP Key announced that “in the vast majority of cases (90 per cent), [of counterfeit medicines] can be harmful to a patient’s health.” 

The EU has conducted extensive research with the EUIPO and OECD on fake medicines. Thailand was identified in 2019 UN Office on Drugs and Crime research as a transit point for fake medicines; as well as Philippines, Indonesia, and Vietnam. The program is coordinated with ASEAN and national governments. Laurent Lourdais, counsellor to the EU mission in Thailand announced: “Harmonized pan-ASEAN safety and control measures allowing easier identification of counterfeit medicines, and improving verification and controls at borders, as well as a system enabling patients to identify legally operating online pharmacies, would certainly help limiting the commerce of these dangerous products.”

New enforcement decree in Vietnam

A new Decree 198 updates enforcement rules based on new commercial practices, especially online. It involves:

•           Clarifying unclear provisions

•           Adding consistency with subsequent legislation enacted after 2013.

Examples of what Decree 198 covers include:

1.         The definition of counterfeit goods is amended. A detailed new definition is created. It especially includes goods with no active ingredients, as well as goods bearing fraudulent label information and counterfeit labels and packaging. A consistency change is the removal of the term "Intellectual property counterfeit goods” which comes from Article 213 of the 2005 Intellectual Property Law from the definition of counterfeit goods. These are already handled by another Decree No. 99/2013/ND-CP on administrative IP violations. This change removes an overlap/duplication, so avoids different outcomes arising from different decrees/laws.

2.         Administrative fines are mainly increased under the new decree. Some minor violations are moved to lower levels of fine (acts of trading counterfeits, goods, services infringing IP rights and banned goods, services on the internet).

3.         A new offence of trading counterfeit goods online is included with fines specified. Specifically this change is in adding e-commerce applications on mobile platforms (“mobile applications”) as the subject of e-commerce IP violations. Compulsory removal of mobile application from application stores is one of the remedial measures.

4.         The administrative enforcement role of the General Department of Market Surveillance under the Ministry of Industry and Trade (MMB) is confirmed. 

The new rules take effect on 15th October. Many administrative IP cases are filed with this department both ex officio cases and complaint based cases. Sometimes administrative complaints ask the case be dealt with by the MMB, in other cases, in collaboration with other authorities.

Broadcasters take on internet content distribution in Indonesia

An interesting court case in Indonesia aims to answer the question, has the internet in effect replaced broadcasting? Indonesia’s Broadcast Law uses a broad definition of what broadcasting is. As in many other countries it aims to manage the number of broadcasting organizations, issue expensive licenses and control content. There is a Ministerial department and a Broadcasting Commission overseeing them. There are restrictions on foreign ownership, rules on content, advertising and must-carry rules (which means certain local content must be shown).

Indonesia’s Constitutional Court (MK) is now being asked to conduct a judicial review of the Broadcast Law in a case filed by one of the country’s leading TV networks, MNC. They argue that Netflix and YouTube, which are offering live streaming services are caught by the definition of broadcast. Their position is that there is no level playing field, that they are required to have broadcast permits and follow many restrictions, but digital content distributors do not.  

The Ministry of Communications and Infomatics (KOMINFO) has given evidence that if the court agrees with MNC, that they would need to shut down all live streaming services, (known locally as Over The Top or OTT services), including Facebook Live, YouTube and other internet services. 

The problem is that the internet is gradually eating into the traditional broadcast sector. Twitter users have jumped in to criticize the case as grasping, from a dying industry with weak content and a profit motive.  These commentators contrast it to the diverse, free, more creative (they say) digital streaming sector. MNC would probably argue one of the reasons their industry is suffering is the heavy regulatory burden which a Facebook or YouTube live streamer abroad does not have.

Perhaps the case is leverage to pressure Parliament to reduce broadcast restrictions. Traditionally this is an area with political and sovereignty concerns. But the internet has overridden this now. Broadcasters need a simplified regulatory environment; if not they say, they face a difficult future. 

Second ISP liability case in Vietnam; this time against Alibaba subsidiary Lazada

 

Vietnamese publisher First News is taking legal action against e-commerce platform Lazada.  The claim by the Saigon-based company is that many Lazada merchants sell fakes books, and despite repeated notices to take them down, the problem has worsened. 

This is the second ISP liability case filed recently in Saigon. See here for details of a similar recently filed TikTok case. It is thought they are the first such civil cases in the country.  

Some of the fakes seen include classics such as Dale Carnegie’s "How to Win Friends and Influence People" and the "Chicken Soup for the Soul" books. The prices of the copyright infringing books are half the prices of the originals they say and many buyers have apparently complained.  First News first reported on this at an event they ran in July when they announced some 700 fake books available on various e-commerce platforms in Vietnam.

First News is a publisher of many books including Vietnamese translations. It previously sued and won compensation from English language schools for reprinting it’s books locally, so is experienced at enforcing its copyrights.  Lazada is owned by Chinese e-commerce giant Alibaba, and is generally regarded as one of the more efficient e-commerce platforms for dealing with fake items in the SE Asian region. 

Vietnam has long had a pirated book problem. This includes unauthorized photocopying and illegal print piracy. From historic classics like Graham Greene’s the Quiet American to Lonely Planet travel guides, sold on streets of Ho Chi Minh City to tourists, to ELT books for those learning English, as well as journals and academic text books for students. 

ISP liability in Vietnam is split into different types of ISPs. E-commerce platforms have a specific liability under a specific Decree 52 on e-commerce regulation.  This requires platforms to take timely remedial measures upon detection or receipt of complaints about business acts in violation of the law on e-commerce platforms. E-commerce platforms must eliminate from their portals any counterfeits, illegally imported goods or IP infringing goods upon detection or receiving a fair complaint. This is therefore a form of statutory liability, without use of the concept of safe harbour.  

The law suit alleges Lazada's local operating company, a company called Recess, which is a Vietnamese subsidiary of Alibaba, repeatedly assisted in the sales of pirated books and was on notice of First News’ warnings. The case was filed in the Ho Chi Minh City District 1 People’s Court.  This court has heard copyright cases before so has some experience. It is the correct forum for two local companies to litigate this issue. 

Conversely the Tiktok case was filed in the Ho Chi Minh City Court (a provincial/city-level court) as it is a dispute between a local party and a foreign one. The grounds will also likely differ as TikTok is probably not regarded as an e-commerce platform but another form of ISP (i.e. “ an online social network service”) so not governed by Decree 52 but a different set of rules, namely Joint Circular 07.  However the underlying principles should be the same.  Platforms and IP owners will eagerly await the outcomes of both. 

 

 

The Rolling Stones get Satisfaction from the courts of Indonesia!

Musidor BV is one of the Rollings Stone’s companies which owns trademark rights in their famous Lips and Tongue logo (left).  This was supposed to be adapted from Mick Jagger's own mouth.  

An Indonesian Tony Budiman register a very similar Lips and Tongue logo with the word STONES and another with STONES & CO, both in class 25 for clothing. Musidor sued to cancel the marks and won, with the Jakarta Commercial Court ordering the Trademarks Office (TMO) to cancel the two marks from the register. Not only that but the court declared the Plaintiff’s ROLLING STONES, THE STONES and the Lips and Tongue logo trademarks are well known.

One interesting point to note was that the TMO legal team filed arguments against Musidor. This is a common problem with the TMO. The TMO is joined as a party to enable them to be bound by the cancellation order. However the Commercial Court rejected their arguments. It is not clear what they were here; typically they argue the examiner properly examined the mark and it should not be cancelled. The TMO’s role in cancellation actions is very murky in Indonesia. They really should not be filing cases arguments against plaintiffs; their arguments are almost always rejected by the Courts. It would be far better if they did not get involved in pointless court arguments about validity of marks, unless there is an allegation of fault against them. 

Tony Budiman filed a Supreme Court appeal and this was rejected. A question arose over the time limit for filing cancellation cases. The Supreme Court confirmed that in the case of bad faith (which this clearly was), the 5 year limit did not apply.