New online IP site blocking rules in Thailand

Part of new amendments to the Thai Computer Crime Act passed by the National Assembly in December 2016 aim to reduce online IP infringement. The relevant IP provisions empower the government to go to Intellectual Property and International Trade Court (IP Court) to seek an order to block sites that infringe others' IP. Once the site blocking order is granted, the government, through officers appointed by the Minister of Digital Economy and Society can then arrange to block the site by technical means or by requiring ISPs to do so.  These new rules take effect in May 2017.

 

Damages for trademark infringement in Indonesia

A recent trademark infringement case helps interpret damages further.  The Plaintiff owns V-GEN and V-GEN MEMORY trade mark registrations in Indonesia in class 9 for memory cards. In 2012, the Plaintiff found counterfeit memory cards sold by shops owned by the Defendant.  A criminal action was filed and the Jakarta district criminal court declared the Defendant guilty and sentenced him to 10 months imprisonment. This Jakarta High Court on appeal increased the sentence to 11 months, which was confirmed by the Supreme Court.

The Plaintiff filed a civil case claiming the counterfeiting  caused considerable damage to his business, claiming IDR 16,340,000,000 damages (over USD1 million) due to profit falls, promotion expenses and intangible damages. The Central Jakarta Commercial Court granted parts of the Plaintiff's claims. The Judges declared the marks well known and infringed and then ordered the Defendant to pay IDR 2.000.000.000 (USD140,000) to the Plaintiff. The amount was the promotional expenses of the Plaintiff in magazines, at IDR 200,000,000 per month x 10 months. The Judges denied the rest of the Plaintiff claims.

The Plaintiff appealed the smaller damages award but the Supreme Court refused his appeal.  In fact this was a decent sized damages award based on evidence. This is typically the only way to recover damages - speculative or unsubstantiated claims usually don't work.  It is perhaps odd that the claim was not based on losses or profits - as it was in the Hitachi trade secrets case - see here.

Vietnam local trademark growth

Vietnam saw double digit trademark filing growth in 2015. 67,797 application classes were filed in total, according to official date released by WIPO in its annual report. But all this growth came from local Vietnamese trademark owners. Other SE Asian markets generally show lower filing volumes than Vietnam, probably because some are new to Madrid, (e.g. Philippines) or not yet fully operating Madrid (e.g. Indonesia, Thailand):

Thailand    52,344
Indonesia  49,534
Philippines 42,936
Malaysia    35,923
 
Foreign applicants in Vietnam comprised around 33% of the total applications, suggesting strong local brand filings (compared to 36% in Thailand). Non residents also filed well over half the applications filed in Vietnam, through Madrid. Vietnam is the oldest Madrid country in the SE Asian region so this is not surprising.
 
Vietnam is a one of the top countries word wide for filing services marks interestingly.
 
However fewer than 10% of the local applicant trademark filings led to protection abroad, suggesting a lack of international focus for local brands.  Only 63 Madrid applications came from Vietnam, with for example 29 from relatively new Madrid member Philippines. Vietnam will be keen to grow its overseas brand filings for its companies to compete on a regional and global level.
  

Cambodia joins Hague

The Government of the Kingdom of Cambodia deposited its instrument of Accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs late in 2016. The 1999 Act will enter into force on 25 February 2017. Designs are an increasingly useful tool for local companies operating in SE Asia. It is a general pattern that emerging economies struggle to develop robust patents. However designs are an easier level of IP protection to obtain and so are more commonly used to protect products by local companies. In addition SE Asia's creative and aesthetic skills make for lots of unique and interesting local designs for products. Until now few sought design protection, perhaps beyond their local market due to cost. Having ASEAN members join Hague is a core IP goal for the region. A boom in design filings can be expected as more countries join in this region.

 

Patent growth in Indonesia

WIPO's 2015 data report on World Patent Indicators shows an interesting trend for Indonesia.

Patent filings in the country jumped by over 14% in 2015 over the previous year, the second largest % rise worldwide after China. This is well over its 7.8% long term growth trend. 9,153 patent applications were made in total. 1,058 of them (nearly 12%) were by Indonesian residents. However two thirds of the growth came from foreign applications. Principally this is from Japan which filed over a quarter of all applications in Indonesia.

By comparison total patent filings in other SE Asian markets were as follows:

Malaysia 7,727
Vietnam 5,033
Philippines 3,734
Thailand 7,930

This will be good for government revenue and surely reflects increasing foreign investment.

Grant rates however remain low at 1911 in 2015, suggesting an increasing backlog. The grant to application ratio of Indonesia is lower than other countries in the region - Thailand, Philippines and Malaysia are showing far higher grant levels. This needs to be addressed to avoid longer delays. The new patent law might help.  

But whilst domestic Indonesian applications rose by 4%, only 6 PCTs were filed by Indonesians, demonstrating how little international technology focus the country has. Compared with 17 PCTs from Philippines, 97 from Thailand and 15 from Vietnam. Indeed, one worries that some of the local inventor applications might not withstand foreign examination.