Wednesday, October 14, 2020

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.

Thursday, October 8, 2020

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.


 

 

Tuesday, September 29, 2020

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.”

Monday, September 28, 2020

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.


Tuesday, September 22, 2020

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. 

Wednesday, September 16, 2020

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. 


 


 


Monday, September 14, 2020

The Rolling Stones get Satisfaction from the courts of Indonesia!

The Rolling Stones logo: who designed it? - Creative Review

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. 


Tuesday, September 8, 2020

Myanmar trademark soft launch to finally start in October

Myanmar’s Ministry of Commerce, which now houses the IP Department, issued notification no. 63/2020 on 28 August 2020 announcing the launch of the soft-opening period for refiling trademarks. At long last the soft-opening period will start on Thursday 1 October 2020. See here for background.

Existing trademark holders who recorded their trademarks under the previous system are required to re-file their marks under the new system in order to preserve their earlier priority date. If not any later new filing will be granted a priority date of the date of filing.

Applications in the soft launch period may not add goods/services over those for which they are already registered under the old system. Any marks that don’t qualify for refiling during the soft opening period will only be able to be filed after the soft opening period, probably in 6 months time.

Thursday, September 3, 2020

When the music stops - TikTok's legal dance with a Vietnamese music titan

Image result for tiktok logo

Major online Vietnamese content platform VNG is suing TikTok in Vietnam. VNG Corporation is a Vietnamese tech platform, founded in 2004, which focuses on digital content, online entertainment, social networking, and e-commerce. One of it’s subsidiary is app and web based a music streaming service, Zing MP3. Zing also owns rights to certain music especially Vietnamese music.

TikTok is huge in SE Asia, a relatively uncontentious region in the current global political environment. Its owner Bytedance counts Vietnam as one of its fastest growing countries. It has avoided political risk there by blocking certain content (it faces a double whammy risk of being big tech and Chinese, both highly sensitive in Vietnam). By steering clear of risk Vietnam is supposedly now among its most profitable markets in Asia.

VNG accuses TikTok of using music owned by Zing  without consent, in a number of its short videos. These are likely user posted videos probably with accompanying Vietnamese music. An analysis report from Zing showed a total of 150 Zing music tracks used in more than 11 million videos on TikTok's website and app. VNG says it sent a cease and desist letter alleging copyright infringement to Tiktok and requested Tiktok to review and remove all the music owned by Zing.

The case was filed in the People’s court of Ho Chi Minh City. The complaint demands removal of the music videos both from the TikTok app and also it’s website, as well as a damages claim for 221 billion VND (over USD9 million).

This is a huge damages claim, probably not likely to be upheld by the court. However copyright cases make up most of the infringement seen in the courts in Vietnam so judges do have some experience of this area. The case could take a year or so if it proceeds to trial. in most countries such ISP cases settle, on the basis that the ISP removes the content. Settlements have happened in other copyright litigation cases in Vietnam.



Thursday, August 6, 2020

Talent Shows and copyright infringement in the Philippines

Who Wants to Win P1M Cash and a Talent Contract from Viva Artists ...

A musical furor is developing in the Philippines arising from the outcome of a local online talent show, The Pop Stage. The copyright infringement complaint relates to the unrelated, but well known musical called “Ang Huling El Bimbo: The Musical” (“AHEB”), which is based on the songs of iconic Filipino pop rock band Eraserheads. The title refers to their most famous 1995 love song which gained global success. The musical director of AHEB, which was first performed in 2018 and subsequently on stage at Resorts World Manila, has claimed that The Pop Stage winner “ripped off” the musical arrangement in one of their entries on the show.

The Pop Stage is an online talent show run by a well known actor Matteo Guidicelli. It is sponsored by the US fried chicken chain, Popeyes. It started several months ago and has been building towards its finale last week. CJ Villavicencio was announced the winner on 2 August 2020.  He won PHP1 million cash price and a one-year management deal with Viva Artists Agency.  His entry was a music video featuring a medley of Pare Ko, Alapaap and Huwag Kang Matakot, which are all popular Eraserheads songs. 

AHEB’s musical director, Myke Salomon, has accused CJ Villavicencio of copyright infringement, specifically for copying without permission the arrangements (the musical treatment and concepts) for those Eraserheads’ songs. He also condemned The Pop Stage judges for allowing such a “ripoff”. Salomon has been supported in his views by many members of the AHEB show’s cast too and other local artists. Now Ely Buendia, formerly lead singer in Eraserheads and composer of the songs used in CJ Villavicencio’s music video, posted “I am appealing to the people, companies and corporations involved in the AHEB plagiarism issue”. He wants them to “set an example” to the music industry. 

Local news agencies have reported that The Pop Stage winner CJ Villavicencio has spoken on the issue and claimed that his performance was a tribute to his favorite artist (Eraserheads) and the musical (AHEB) and that he has no intent to plagiarize. 

The Pop Stage has not yet addressed the complaint and there is a growing popular clamor for this to be corrected. Apart from infringing the rights of the musical director of AHEB it may be unfair to other contestants of the show.  Many ordinary Filipinos have supported this position on social media, that artists’ original IP should be protected. The Philippines has a robust music industry with many performers famous far outside the country. Many forms of copyright piracy plague the industry despite clear provisions in the IP code against it.

Sunday, August 2, 2020

Government compulsory licensing in Indonesia

Forced cure: compulsory licensing in the coronavirus era - JUVE Patent
Indonesia has two different rules on compulsory licensing. One relates to third-party compulsory licensing which implements the TRIPS Doha Declaration rules. The second is government licensing. This enables the Indonesian government to implement a patent themselves due to public interest or security and defence reasons. 

Public interest government licensing is directed to 4 categories of public emergency - public health emergencies, agriculture and food resilience requirements, animal health emergencies or environmental or natural disasters.

The government can appoint third-parties to produce the patented product if needed. Such government implementation of a patent does not impair the patent holders exclusive rights. That means they can still implement the patent i.e. make a product themselves, and sue others for infringement. Patent holders are required to pay annual maintenance fees as normal. 

An application procedure is set out. The IP office will review the government application especially to check that what they request comes within the scope of the granted patent. The patent holder will be notified. The DGIP will then set a license fee to be paid.  This Regulation seems designed to support emergency Covid vaccine production if necessary. See the earlier concerns expressed here

The other form of government license relates to defense technologies. Security can include technology, encryption and surveillance related subject matter. The government can appoint third-parties to produce the patented technology if needed. The patent holder may not then exercise his own exclusive rights and implement the patent. But conversely, patent annuity fees are reduced to zero. An application procedure is set out. The IP office will review the government application especially to check that what they request comes within the scope of the granted patent. The patent holder will be notified. The DGIP will then set a license fee to be paid. 

The regulation also contains a set of rules relation to weapons technologies that conflict with Indonesia‘s defense and security. In essence it is prohibited to implement patents for these in the country without government approval.



Sunday, July 26, 2020

Covid 19 research and IP in SE Asia

Update Rabu 20 Mei 2020: Pasien Positif Covid-19 di Jakarta 6.150 ...
As research work on vaccines and treatments worldwide speeds up, SEA is taking part in various trials. See here for previous reports on concerns about access to Covid treatments. 

There are a dozen or so candidates to prevent or treat COVID-19 now in clinical trials. These include preventative vaccine candidates (like Oxford University’s ChAdOxInCoV19 or Pfizer’s BNT162), as well as various existing and new drugs for treating the disease (e.g. Gilead’s Remdesivir or Zhejiang Hisun’s Favipravir), as well as generics like Dexamethasone. 

Nearly 2,000 trials are ongoing worldwide now. Data in late July indicated nearly 30 in SE Asia, with Thailand leading with at 8 trials following by Singapore, Malaysia and Indonesia. Trials are hugely expensive and the majority fail at some point. The key to speed is the global coordination by WHO to avoid duplication of the same work. 

The majority of the work is re-purposing existing drugs.  The challenge with that is where there may be patent protection for these drugs.  A number of the older ones, including Tenofovir (another Gilead drug) have expired in many countries.  Another problem is second medical use patents, which are not consistently treated around the world or in SE Asia. Indonesia has also recently brought in new rules on compulsory licensing (report to follow) aimed to allow medical emergencies to override patents. 

There is no suggestion anyone will use IP to prevent access to Covid treatments. The race is on and it is useful to understand the IP background since the issue will need to be considered at some point. 

Monday, July 6, 2020

Laos Trademark law implementation


Flag of Laos | Britannica

Laos is one of the smallest IP markets in SE Asia. The Amended Law on Intellectual Property No. 38/NA was published in May 2018 but many parts did not take effect immediately or needed more guidance. 

In early 2020 Decision No. 2822/MOST took effect to clarify many of the Trademark provisions of the Amended law. Areas covered include:

- Services marks are now allowed
- The detail for how to register 3D marks are set out
- There are more detailed rules on filing through local agents under Powers of Attorney
- Renewal deadlines are shortened. 
- Assignments and licenses must be recorded at the Department of Intellectual Property
- Examination and opposition periods and the registration timeframes are set out
- Cancellation procedures are described
- Appeal procedures are described

In 2018 the number of trademark filed exceeded 5,000 for the first time. Local applicants numbered 249. Applicants can expect filings can become easier. 

Sunday, June 21, 2020

Covid vaccines and emerging markets


Race for virus vaccine could leave poor countries behind ...


As the race for a Covid 19 vaccine speeds up, countries, especially developing countries, are starting to express concerns about how it will be created, patented, made and distributed. Indonesia recently asked the  International Coordination Group (ICG), a group of countries working on the COVID-19 pandemic response to seek fair distribution of the vaccine to every country in the world.

The concern appears to be the classic access to medicines one, albeit with a new pandemic driven urgency. Flexibility of intellectual property rules will be needed; that is, patents must not be used to prevent access to a vaccine.  The Covid 19 pandemic would almost certainly fits within the Doha Exception to the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

With so many companies in different countries working on procuring a vaccine the need for collaboration in development as well as production will be a test of the world's IP and other cooperation systems. Patent owners will need to decide if they will patent or not. Many will likely need to cooperate to accelerate the quality and efficacy testing process, and governments must fast track regulatory approvals. Then the process for making available and pricing must be considered. Will the TRIPS mechanism be used for governments to authorize themselves, or third parties, to make use of a patent without the permission of the patent owner through compulsory licensing?  Once that is worked out, how will manufacture and distribution potentially to billions of people occur? Even doing that alone will be difficult, before you consider the risk of hoarding and disputes.

Brazil, Indonesia and others are now seeing media discussions about these issues. In May the US rejected wording in a World Health Organization (WHO) resolution that backed the rights of poorer countries to ignore patents to gain access to Covid-19 vaccines and treatments. Trump’s America First policy worries many outside the US. So too does the continued assertion that China is somehow to blame. 

Public health experts and campaigners believe it is vital to pull together to end the pandemic. EU has taken a lead; leaders in Italy, France, Germany and Norway, together with the European Commission and Council, called recently for all innovative tools, therapeutics or vaccines to be shared equally and fairly.