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 Philippines mayor and the counterfeit sneakers

Mayor Joy Belmonte of Quezon City a region of Metro Manila has had to issue a formal warning to her department. It appears that the Quezon City government accidentally ordered 1100 pairs of counterfeit sneakers, for use by local athletes representing Quezon City in various national sports events.

The City's Procurement Department's Bids and Awards Committee has a Technical Working Group which apparently selected the supplier of the sports shoes. They will now need to investigate what happened. Mayor Belmonte ordered the City Legal Office to initiate legal action against anyone who was involved or conspired to commit any offenses. apart from the IP laws, the Consumer Protection Act and the Procurement Act may have been breached. The mayor has ordered the recall and replacement of the counterfeit shoes.

Singapore/Battam case transhipment concludes

The case of Burberry Ltd v Megastar Shipping Pte Ltd has reached the Singapore High Court. The case arose because counterfeit Burberry, Louis Vuitton and other luxury goods were shipped from China to Singapore, in two containers,  for onward shipment to Batam, Indonesia.  The crux of the Singapore litigation was about how the goods were transhipped through Singapore. 

The Singapore Court of Appeal has held that “goods in transit” are still imported so illegal under the Trademarks Act. However, the freight forwarder importer the goods, but it did not 'use' trade mark. Instead as a commercial freight forwarder it was unfair to impose liability for trade mark infringement as they are a mere conduit.  

The first thing to say about this is that transhipment is increasingly now viewed as something customs authorities must deal with from an IP perspective. The Singapore EU FTA ought to have covered it, but it did not include goods in transit. Singapore likes to defend its position as a transhipment hub, so not be obliged to check all shipments (despite earning money from each container that passes through its port). So it is positive that the court did find the goods imported in principle. In this case there were facts that showed the shipments passed through Singapore’s Portnet IT system. 

However the other issue is the use of the nearby Indonesian port, Batam. The problem there is that Indonesia has no effective border protection system, despite one being introduced last year. See here. So there remains a major issue whether Indonesian customs could stop the goods. Secondly Batam is a Free Trade Zone. It is often used for export processing, and illicit goods pass through it frequently. The region of Riau was historically known for smuggling - see here.  Indonesian customs generally do not interfere and it is not clear if the new IP border protection system could intervene at all. The IP owners suspect that such a huge volume of fakes cannot actually have been bound for Batam itself, that port being relatively remote from the major markets in Indonesia. 

So although important, the case probably doesn’t help in deterrence. Freight forwarders are not liable, and Indonesia’s Batam is still going to be used to handle illicit goods freely. The loss of the fake goods was the only deterrent to whomever the ultimate owners were, a fact which will never be known along with their ultimate destination.

Indonesian Pierre Cardin case finally ends

The Indonesian litigation over the PIERRE CARDIN mark has finally come to a conclusion. See here for the previous reports. In 1974 the mark PIERRE CARDIN was registered in class 3 then later assigned to Alexander Satryo Wibowo.  The crux of the case was whether the case had passed the 5-year deadline for cancellation actions and the extent of the available evidence bask in the 1970s o prove bad faith. Alexander won at first instance and on appeal. 

Pierre Cardin filed a reconsideration appeal to the Supreme Court based on new evidence (novum). The Supreme Court rejected the appeal. The court did hear the new evidence submitted but rejected the case as being a repetition of the earlier case. 

Reconsideration appeals are always difficult. New evidence needs usually to be compelling. The problems in such cases usually begin with the earlier cases having insufficient evidence; the loss then becomes harder and harder to overcome over time. 

The Myanmar IP law saga slowly heads to conclusion

 
With Myanmar's IP laws promised for many years, but still not enacted, the slow pace of government in contrast to business is being exposed. The IP law drafts are still with the Parliament. The Law Drafting Committee passed the Draft IP Laws to the Parliament on January 17, 2018 for a final debate.  The hope is now that the laws will be enacted in the coming few months. They will still need a period before coming into force, then there is the preparation of the relevant subordinate rules and regulations. But at least 2018 now appears to be the year they will be enacted. 

In another twist the primary Ministry will be changed from Ministry of Education (formerly known as the Ministry of Science and Technology) to the Ministry of Commence and as a result, right now, Ministry of Commerce is preparing the new IP infrastructure including transferring staff from the MOE.

The launch of the Fashion Designers Entrepreneur Association in February was a reason for that industry to criticise the lack of IP progress. Mogok Pauk Pauk, vice-chair of the association complained to the media "people are copying our designs and ....destroying our trade because they have money and we don’t have copyright,” she said.

This will be an important year for Myanmar and IP development.

Longstanding Indonesian PRADA dispute settles

A long trademark dispute between PT. Manggala Putra Perkasa and Prada S.A. has apparently ended in a settlement. Both parties have been in litigation since 2013. Previous details of the dispute are here.

The dispute is over the true ownership of the PRADA trademark. Both parties claimed to be the rightful owner and have rights to use the PRADA mark in Indonesia. Prada S.A. claims to be first user of PRADA in the world since 1913, with well known mark rights. PT. Manggala Putra Perkasa claims to be the rightful holder of a PRADA trade mark registration in Indonesia in class 18 and 25.

Prada S.A. had already been successful in one case to cancel PT Manggala Putra Perkasa’s registrations on the grounds of similarity in principle to their well-known trade mark. After this decision, PT. Manggala Putra Perkasa filed a civil and criminal action against the use of the PRADA mark in their shops in Jakarta.

Under the settlement both have agreed to withdraw all the ongoing lawsuits – one claim from Prada S.A. and three claims from PT. Manggala Putra Perkasa. PT. Manggala Putra Perkasa’s legal representative stated to the press that their side have been negotiating with Prada S.A. outside court. He did not divulge further details.

Prada's Indonesia dispute escalates

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

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

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

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

  

Indonesia civil trademark damages calculations

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

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

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

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

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

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

Shipment of fakes in SE Asia

The diversity of transport methods for counterfeit goods in Asia is an increasing headache for IP holders. Once upon a time, all you needed to worry about was catching containers shipped by sea. Customs enforcement involved seaport training and seizures. Now there are many more ways fake goods are shipped such as the following:

-   Some products, such as household detergents or alcohol that are large in volume but low in value are often shipped in containers to be economically viable. Malaysia's Langkawi island has a reputation for being an alcohol smuggling centre.

-   Smaller higher value products, such as luxury goods, watches or phones can be posted / couriered or airfreighted. The vast majority of customs seizures around the world these days are couriered and posted, helped by the fact that online orders for small volumes are now so easy in the age of e-commerce.

-   Many of SE Asia's land borders with China, especially Myanmar, Vietnam and Laos have road and river crossings with large numbers of people crossing daily with stocks of counterfeit goods. Last week Thai authorities arrested a Cambodian man crossing the Thai border. In his  car were 20 fake bags and 52 pairs of fake adidas shoes which he allegedly planned to deliver to a customer in Bangkok. Vietnam has a porous border with China and many people cross daily without passing through the border gates just walking over the hills, or by boat over the rivers. An entire industry of smuggled and counterfeit goods porters exist for hire.

-   Often heard also are tale of air crews and others in the transportation industry carrying fake goods with them.

All of this makes the issue of border interception much more complex than it once was. Meanwhile still SE Asia is far behind the rest of the world in terms of its Customs border protection systems, with only Thailand seizing meaningful volumes of products.

 

Asics beaten in TIGER logo race in Indonesia

Asics Corporation the Japanese sportswear company has various brands including its name ASICS, its logo and variations as well as brands like the Onitsuka Tiger logo, a heritage shoe brand. In a very typical Indonesian brand piracy situation two defendants: Theng Tjhing Djie, Liong Hian Fa registered various logos in Indonesia between 1994 to 1996, which look very similar to the ASICS TIGER logo and incorporated their sub brands.  One Defendant appears to have transferred copyright in them from one to the other and they appear to have had copyright registrations too. 

The Plaintiff sued to cancel the marks claiming that the Defendants registered the marks in bad faith to take advantage of the Plaintiff’s popularity. The Defendants argued that the Plaintiff’s claim is unclear and should not be accepted. The Defendants filed a counter-claim to declare that they are the rightful owners of the logos’ copyright which are also registered in Indonesia, so the Plaintiff Asics was suing them in bad faith. 

The Central Jakarta Commercial Court accepted parts of the Defendant’s argument. In particular Asics had mixed up copyright and trademarks its its claims so the Judges rejected much of Asics' arguments. Asics filed an appeal to the Supreme Court. But this claim related to copyright too, around who first published the logo. So the Supreme Court confirmed the lower court's appeal.
Cases are frequently rejected for containing mixed claims like this. 

Asics could have filed a pure bad faith trademark case, and then a separate case to cancel the copyrights. The Defendants exploited a rigid approach taken by the law in Indonesia, and claimed both trademark and copyright to support their pirate registrations. The Plaintiff needed to deal with these separately.

Civil Court damages awards in Indonesia

An infringement case has reached trial in the Central Jakarta Commercial Court and the panel of judges ordered the Defendants to pay 2.5 billion rupiah (USD190,000) in compensation. The case concerned the trademark NAKAMICHI registered in class 24 for textiles by Andy Najarudin.

 

He found out about infringement of his mark on August 2013 through customer complaints. The defendants comprised a series of infringers involved in the manufacturing, trading and distributing of products bearing the Plaintiff's trade mark: Harry Sucipto, Janwar T. Sucipto, PT Sipatek Putri Lestari, Dhanny S. Suwaji (owner of a business called CV Pansurya), dan Handoko (owner of a shop called Toko Moro Seneng).

Despite what appears to be a large damages award by Indonesian court standards, the Plaintiff's lawyer complained to the media that the award was far below his client's actual losses. A separate criminal case had been filed and one of the Defendants had been sentenced to 3 months imprisonment.

Whether the Plaintiff will get paid is unclear. But this is a strong deterrent message. Too few infringement cases reach the civil courts so this damages claim is a good example.

Lacoste tries to take a bite out of Crocodile's marks in the Philippines

Lacoste and Crocodile have been fighting battles all over the world over their Crocodile logos for decades.  A recent spat in the Philippines is the latest in their lengthy war. Crocodile International had filed their Crocodile and device trademark application and Chemise Lacoste had opposed the mark. Chemise Lacoste lost the opposition so appealed to the Director General.

In a decision in October 2014,  the long coexistence, the clear appearance of the word Crocodile were factors the Director General decided warranted dismissing the appeal. He confirmed the Lacoste mark was well known, but found two marks did not cause consumer confusion. No doubt there will be appeals.

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!