ISP copyrght and trademark liability solutions in Philippines and Thailand

In the Philippines Senate Bill No. 2109 a.k.a. the Philippine Online Infringement Act is close to enactment. It will establish a system to allow complaints filed at the IPO to notify the National Telecommunications Commission to terminate trading licenses for ISPs that continue to permit hosted websites to infringe or assist copyright infringement.

Meanwhile in Thailand a new bill seeks to put teeth into a system which was out in place several years ago.  Thai copyright law amendments, details of which are here, failed to deliver the results needed. That is to require ISPs to take down infringing content or risk an injunction, Instead ISPs frequently require a  court order  to remove illicit content. The new bill establishes a  notice and takedown system to provide save harbor. If they don’t comply, ISPs become liable for the infringement.

In both countries copyright enforcement should become easier; however trademark infringements hosted by ISPs remain problematic. ISPs especially e-commerce sites also need safe harbor protected by notice and takedown, along with a threat of injunctions and if they fail to comply, liability. And if possible fast administrative site blocking.

Thailand's Madrid entry

It is now official, from November 7, 2017 applicants will have the choice when filing a mark in Thailand to either file it via the Madrid System or through filing a national application directly with the Department of Intellectual Property (DIP). The Thai trademark system can be complicated, regimented, and sometimes capricious due to over imaginative examiners. Can the one-size-fits-all Madrid System elide all of this and make registering a trademark in Thailand easy? it is too early to tell; however the following features should be considered:

• International applications designating Thailand will be examined by a dedicated group of examiners different from those examining national applications. It remains to be seen if that group of examiners will be more liberal than those in charge of domestic filings.
• Goods and services in international applications designating Thailand will be translated into Thai by the DIP itself. Even if the application goes smoothly the accuracy of the translated goods/services in Thai is likely to be a concern. Checking translated goods/services prior to the grant of applications may become part of the filing strategy.
• It is still essential to conduct a pre-application trademark clearance search to assess the trademark’s registrability. Is the mark inherently distinctive? Does it run afoul of Thailand statutory prohibitions on trademarks? Does it conflict with any preexisting trademarks,. Thailand is somewhat notorious for trade mark squatters and counterfeits.
• Finally assuming the screening results are clear, applicants must determine which class(es) to file in and the specific products or services (“items”) to be covered by the mark. This is a lot trickier than it sounds because the Thai system is picky on how goods and services must be itemized.

Thailand to introduce plain packaging next

Thailand looks to become the next country to adopt plain packaging for cigarettes. The draft Tobacco Consumption Control Act from the Health Ministry has been sent to the Council of State for review.
 
This will create a standard form of cigarette pack. Much arger warning labels will be needed. Trademark size will be reduced. Other brand elements from imagery to corporate logos to colours will be prohibited. 

The law is being driven by health concerns given Thai consumption of 32 billion cigarettes a year. Excise rises haven't reduced smoking it is said. 

In the region other countries are mulling the issue, with Malaysia thought to be next. The law may take time to enact; and as elsewhere cigarrette companies may challenge it.

Thai online infringements

 

Thailand's Department of Intellectual Property says that it is getting increasingly concerned about the prevalence of IP infringements on the internet. The DIP DG announced stricter enforcement to tackle digital IP infringements. Like most South East Asian countries, internet commerce has trailed the developed world mainly due to the slow take up of payment systems. That has now changed and e-commerce is booming.

However Thailand's IP laws aren't yet clear on secondary liability. While rules on copyright exist, so the DIP's concerns can be addressed easily for software, movies, music and the like. Then the urgent enforcement they want can be undertaken. But the same is not so clear for counterfeits /trademark infringements.  IP holders at present have to claim infringement on the basis of aiding and abetting under the Penal Code to take action against websites offering counterfeits. The idea is that knowledge can be proven if they have sent notices to the sites and they refuse to cooperate.

This remains a key challenge in most civil law SEA countries - specific legislation is needed to provide for secondary trademark liability.

On March 5^th the USTR announced its regular review of the world's notorious markets, the largest counterfeit and pirated products centres in the world. These comprise physical locations selling hard goods as well as online sites distributing pirated content. China features heavily of course (its AIC head even this week announced how important it was to stem the tide of fakes in China). But many other regions also feature.

 

SE Asia has over time been improving. The Philippines has excitedly announced its removal from the list. However 3 key SE Asian problems remain:

 
in Indonesia Harco Glodok, the consumer goods and electronics market in North Jakarta remains a key centre of counterfeit hard goods, largely imported from China.

Thailand has a number of physical areas of concern including Talad Nat on Wireless Road which is very close to the US Embassy in Bangkok.

Vietnam's zing.vn is primarily a social media site, but continues to provide access links to unauthorized music content. Years of negotiations to legitimize its content distribution have still not yielded results.

Despite the recent growth in online business in the last few years, so far SE Asia has not seen online fake sales take off in the same way as other parts of the world. Only Zing.vn so far has been named as a serious problem.  

The IP upside of Thailand's military coup

IP Komodo is the last lizard to praise a military takeover. However the Thai military government is getting active in border IP protection all of a sudden. Thai soldiers arrested 16 Cambodian border traders last week for smuggling counterfeit apparel and footwear into Thailand. It took place at the Poipet City border crossing on Saturday which is near the Rong Kluea border market in Thailand’s Sa Kaeo province. A total of 21 carts of secondhand clothes hid the fakes.  

This led to a protest at the border on the Cambodian side. It is probable that the 16 traders will be released and a deal struck for the traders association to stop importing fake goods.

The real IP story is that Thailand’s military government has been active against fake trademarked goods since they seized power in May. They set up a second Poipet military checkpoint to inspect goods entering Thailand away from the main border crossing. So this is in addition to customs checks. The military are getting active to enforce Thai laws. Their reasoning is that the military takeover was on the basis of widespread government corruption. Improving enforcement seems to be part of that.

Indonesia to start e-filing

Indonesia operates a copyright registration system. It is slow, barely searchable and costly. As it is voluntary and merely evidence of the ownership and subsistence of copyright, it is not used much. In fact it tends to give too much weight to registered copyrights over unregistered ones. Infringers sometimes use it to register spurious rights because it is hard to remove them. But it has some advantages, when you are on the offensive to add rights which might be less than strong in unregistered form.
A revamp of systems at the IPO is leading to an upgrade to the copyright system. Online filing of copyrights will come into effect. The IPO reckons it will speed up registration from 9 months to 2 weeks. The IPO office is using this as a test to start efiling more widely, for trademarks, designs and patents. That will take some time, but will hopefully help to reduce the massive backlogs as well as reduce corruption by putting payment online. 

Elsewhere, Singapore and Malaysia already have e-filing. The Philippines introduced it for trademarks, with online payment too. In Thailand there is an efiling system but manual payment and requirement of submission of hard copies renders it useful only for urgent cases. Vietnam like Indonesia still requires manual filing. 

 
 

The end of well known mark registers in SE Asia?

Several South East Asian countries have attempted to keep a database of well known trademarks, primarily to help trademark examiners prevent unauthorised registrations of copy marks. These have usually been a failure, because measuring fame is a classic intangible. Yet countries faced pressure to stop an avalanche of unauthorised  'pirate trademark' applications usually from local businesses. As the region develops IP Komodo believes this is starting to slow down probably as a function of increased economic development and awareness of IP. A lack of sanction for unauthorised registrations and weak bad faith rules however perpetuates the problem in some places.

Indonesia remains a problem country, with class 25 apparel a rich target for local businesses to target up and coming foreign luxury brands. One local tobacco group still insists on registering famous brands for its cigarettes to the annoyance of many brand owners - such as their Rolex cigarettes! Indonesian TM Office attempts to run famous mark lists failed years ago. Now brand owners must file oppositions and on occasions when these fail (inconsistent examination remains a problem), they must file cancellation litigation at great cost in the civil courts. So trademark pirates can still exploit examiners' lack of overseas brand knowledge, and no penalties for bad faith acts.

Thailand has attempted to run a system recording well-known marks since 2005 under its Board of Well-Known Marks. However examination has been on hold for years and new applications now languish. Of several hundred well-known marks filed around 75 have been accepted. Meanwhile there are suggestions of amendment to the rules, but the Board has insufficient team members. The political deadlock adds problems. In practice there may be little value in continuing this register given how few pirate applications are made these days in Thailand.

The Philippines also used to have its share of pirate marks, but these have dwindled in recent years due to the increased efficiency of the IPO, its high quality opposition system under the BLA and presumably increased awareness of the futility of registering others' brands. See some of the IP Komodo reports on well known mark holders successes by clicking the Philippines Trademark link below right. The two previous attempts to keep well known mark lists in the Philippines have also withered.  The last IPO list in October 2010 was a list of marks declared as well known decisions by the BLA, and its predecessor the BPTTT. But it has not been updated. 

IP Komodo thinks these lists are pointless as they are always inaccurate and out of date. Examiners' cursory internet searching ought to catch most pirate version of famous marks. Ideally there ought to be better quality examination and opposition decisions that refuse copies of famous marks more robustly.