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Friday, November 27, 2015

Ikea's trademark battles in Indonesia

Image result for ikea logo
Swedish furniture retailer Ikea has had a difficult time with IP cases in Indonesia. In some ways their problems illustrate the difficulties many brand owners face. Part of the difficulty is that trademark cancellations are complex court litigation unlike in most countries.

In 2011 it fought a case against a company called PT Angsa Daya over a Class 19 mark IKEMA covering all kinds of floor and wall tiles ceramic. See here for how they lost at first instance and then won on appeal. The Supreme Court initially decided IKEA was famous and Angsa's mark was similar and was registered in bad faith. Unfortunately the Supreme Court later overturned this on reconsideration appeal deciding that the goods were not similar to Ikea's registrations in classes 11, 21, 24, 35 and 42. Bad faith was not mentioned it seems by the Supreme Court, so perhaps the evidence was weak.

Ikea then opened a shop in Tangerang, in the greater Jakarta region. A second case against PT Kedaung Industrial over the mark IKEA was brought by the brand owner Inter Ikea Systems B.V. in 2011, claiming that Kedaung had registered the mark IKEMA in class 21. At first instance, the Commercial Court decided to reject the claim. On appeal the Supreme Court decided IKEA was a well-known Trademark, IKEMA was similar to IKEA and it was registered in bad faith. However, Kedaung appealed further and lost. In this case the mark was but similar but the class was one which IKEA was registered in.  

Recently a third dispute went to court. This time it is IKEA's own class 21 and 20 marks, which a local company PT Ratania Khatulistiwa sought to delete for non use. Ratania had filed its own applications for IKEA INTAN KHATULISTIWA ESA ABADI in those classes. The Commercial Court agreed and found the marks had not been used for 3 years. Although the decision has not been published yet the news reports indicate the Supreme Court upheld the non use and deleted the marks. One judge apparently dissented.

These kinds of difficulties are not uncommon for major brands investing in Indonesia. It has a crowded register with a lot of similar marks, some bad faith registrations, a lot of descriptive words and local language marks. Clearing a path to brand exclusivity can be a major exercise.


Saturday, November 7, 2015

Indonesia's efforts to protect creative industries' IP

 Image result for BEKRAF indonesia
Indonesia established a government agency called the Creative Economy Industry Agency ("BEKRAF") to foster and grow the sector. It covers 16 categories of creative industries, which are:

Music, crafts, publishing, fashion, culinary, advertising, movies, application software, games, performing arts, video animation, architecture and interior design, fine art, photography, visual communication design, TV and radio and product design.

Their top priorities are movies, music, and digital applications.
The Agency was established as a spin-off of the previous government's Ministry of Tourism and Creative Economy as an independent government agency. Initially, the agency reported to the Ministry of Tourism but now it reports directly to the President.

After the BEKRAF Head's appointment in January 2015, the Agency appointed eight members of an executive team on July 2015. The House of Representatives has not yet approved their program budget, hindering any significant activities.

Despite that, BEKRAF's Head, Triawan Munaf, stated that they have been preparing several moves in terms of copyright protection in Indonesia.

a)     Establishment of an Anti-Piracy Task Force

The task force was established on August 2015. Their current plan is to press criminal charges against several repeat offenders of movie pirate websites.

b)     Development of Online Anti-Piracy Alert System

A collaboration with PT Telkom Indonesia, the Alert System is planned for websites that contain copyright infringement. The system will show pop up information to remind the user of the sanction for downloading illegal content. The pop-up will also include a link to sites that provide paid, licensed digital version of the content. The Alert System is expected to start operating on January 2016.

By Q1 next year, BEKRAF will likely be more active in anti-piracy and copyright protection efforts in Indonesia.  Of course the main problem in in Indonesia is the almost complete lack of law enforcement, but any alternative solutions are welcome, indeed alternatives like this will probably be the only means of enforcement in the foreseeable future


Wednesday, November 4, 2015

Philippines criminal copyright case finally decided - and the case is thrown out!

Image result for abs-cbnA Supreme Court (SC) decision has issued concerning ABS-CBN news footage covering the homecoming on 22 July 2004 of Angelo delay Cruz, an expatriate worker kidnapped by Iraqi militants. ABS-CBN allowed Reuters to air the news footage for international subscribers only. GMA, a Reuters subscriber, received the live video feed from Reuters and broadcasted the footage for about 5 seconds. ABS-CBN took action GMA for criminal copyright infringement.

The public prosecutor found probable cause to indict GMA’s Program Manager and Head of News Operations. GMA appealed to the DOJ which ruled in its favor of GMA holding that good faith may be raised as a defense. The Prosecutor and ABS/CBN sought reconsideration of the ruling (anyone can seek reconsideration of most Philippines decisions without any penalty - a longstanding problem with the legal system). Subsequently the DOJ reversed its earlier ruling, found probable cause to charge the two people and indicted them. GMA appealed that ruling to the CA, which ruled in favor of GMA and declared that since GMA only aired 5 seconds of the footage and had no notice of the “No Access Philippines” restriction, there could be no criminal liability as it wasn’t intentionally committed. So ABS-CBN filed the appeal before SC.

The SC ruled news footage is copyrightable. GMA argued 5-seconds may be considered fair use. This is a matter of a defense which should be evaluated at the trial but the SC took note of the high value of broadcasts and the limited time periods seen in other media such as Instagram, Vine and 1 Second Everyday.  But the SC ruled that although “any person” may be guilty of infringement criminal liability of a corporation’s officers or employee’s stems from their active participation in infringement. GMA’s officers were thus not liable for infringement as they had no knowledge so could not be personally liable.

The case illustrates 2 problems. One is the length of time the Philippines criminal system takes - 10 years here to throw the case out. The primary reason is the huge number of appeal levels and lack of penalty for getting it wrong (i.e. costs, bad reputation for prosecutors who make mistakes). Secondly this was really a civil case over a royalty fee for use of footage. It was waste of time and public money.  The damage to society was so limited that the prosecutors and DoJ should have refused the cases as having no wide effect on society, so referred them to civil action. Then they could focus on 'real' criminal IP cases.  

Sunday, November 1, 2015

Indonesia proposes new data privacy law

The Indonesian government has recently prepared a Draft Bill on the Protection of Private Data (“Data Bill”), which is to be discussed by the House of Representatives. This will be the first modern data privacy laws (the previous Electronic Transactions law and regulations are out of date now).

The Data Bill seeks to protect private data by governing standards around data management and transfer. Provisions relate to:

a. Two types of private data; sensitive and normal private data. Sensitive private data refers to religion/beliefs, health, physical and mental status, sex life, financial position. Normal private data refers to data identification information.  Sensitive data has much narrower permitted uses (e.g. employment, protection, medical, law enforcement, or it is public domain) and requires consent.

b. Management of private data by organizations including corporations that engage in the gathering and storage of private data. There are specific consent requirements. Data users are subject to various disclosure requirements (presumably local language notifications), relating to the organization, the purposes of the data collection, types of data, and time periods. There are obligations on data users to disclose to data owners, to take security steps to protect it, and restrictions on data transfer (consent is required unless there are contracts or international agreements).

c. Usage of video-surveillance devices;

d. The role of the Information Commission in protecting private data; and

e. Transfers of private data.

The Data Bill appears to set out a modern data regime and the House will debate and is expected to enact it soon.

Friday, October 23, 2015

Online liability for ISPs in the Philippines

Image result for lazada logo 
Etude House is a Korean cosmetics brand. It launched in the Philippines in 2009 through a distributor called Rosa Fiore House Corporation and has 40 stores in the country.  

The Philippines distributor has filed criminal charges against the online shopping site Lazada over the online sale of fake products online. Rocket Internet owns Lazada, which is one of the largest B2C eCommerce markets in South East Asia.

Rosa Fiore issued a Facebook post saying that they had filed criminal charges against officers of Lazada.com.ph for IP infringement under the Intellectual Property Code. "We have not consented to any sale of such products by Lazada.com.ph and and is not in any way connected with the website and therefore cannot guarantee the authenticity and/or genuineness of the product sold by the said website," they said. The case was filed at the Office of the City Prosecutor of Makati in Central Manila.

In a separate statement, Lazada said it has removed the trader which sold the fake Etude House products. They apparently investigated the counterfeit allegations raised. They had concluded there were questions around the authenticity of the offerings, so "the merchant has been promptly removed," the company said.  Lazada also assured its customers that feedback regarding products is taken seriously. They have a "zero tolerance policy towards non-compliant sellers." Their policy includes investigating merchants, removal of products and a money back return policy.  

It is perhaps an aggressive step, but Philippines law on this is not settled. No clear secondary liability structure exists in the IP Code to make online platforms liable for trademarks, unlike for copyright. As this is a criminal case, it is unlikley to proceed or reach trial any time soon.

Wednesday, October 21, 2015

Windshield raid in Saigon

Image result for mercedes windshieldA raid by the Ho CHi Minh City Economic Police department uncovered a factory, Minh Hoang Ltd, Co. (located at Tan Tao industrial zone, Binh Tan district of the city) making counterfeit car windshields. The raid uncovered numerous counterfeit windshields for car brands such as Mercedes, BMW, Audi, Toyota and Kia. Mercedes and BMW representatives appear to be leading the case. Minh Hoang was uncovered through investigations to be importing blank windshields from China. Then they were cutting and silkscreen printing them with the brands. The fake products were sold at one tenth of the genuine product prices in Ho Chi Minh City. 

Friday, October 16, 2015

Philippines IPO to send IP cases for WIPO mediation

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The Intellectual Property Office of the Philippines (IPOP) is now offering WIPO Mediation for mediation of disputes pending before IPOP. Under an MoU, IPOP and WIPO have established a joint dispute resolution procedure for the referral of IP disputes to the WIPO Arbitration and Mediation Center.
All cases filed at IPOP can at present qualify for mediation with IPOP. Now instead of IPOP mediation, where one or more parties is domiciled outside the Philippines they can select WIPO. Specific case types include: 
  • Administrative complaints for infringement of IP
  • Unfair competition
  • Technology transfer payments disputes
  • A variety of copyright cases
  • Appeals to the Office of the Director General (ODG) from decisions of the Bureau of Legal Affairs (BLA) and the Documentation, Information and Technology Transfer Bureau (DITTB)
  • All other cases which may be referred to mediation during the settlement period declared by the Director General
WIPO Mediation may be advantageous for foreign parties or parties seeking to settle related disputes in multiple jurisdictions.

Monday, October 12, 2015

Singapore accredited for PCT searching and examination

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The development of SEA and in particular Singapore as a patent centre continues with the appointment of IPOS as an International Search Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT).

MoUs have been signed with the Directorate General of Intellectual Property (DGIP) of Indonesia, and with the United States Patent and Trademark Office (USPTO). Already IPOS is an ISA and IPEA for a number of countries, including in SE Asia, Vietnam, Brunei, and Laos. IPOS launched operations as an ISA and IPEA on 1 Sep 2015, so is now the first IP office in SE Asia through which businesses and inventors can fast track patent applications for  protection in the  148 PCT member countries. IPOS has already received 41 PCT applications appointing IPOS as an ISA and IPEA.


Wednesday, October 7, 2015

EU Vietnam FTA signed

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On 4 August 2015, after three years and several rounds of negotiation, the European Union – Vietnam Free Trade Agreement (“EVFTA”) officially established principles for the basic content of the Agreement.
The EVFTA is a comprehensive and advanced Agreement, balancing rights and benefits for both parties whilst simultaneously complying with WTO regulations. The main content of the Agreement includes Trade of Goods, Principles of Origin, Customs, sanitary and phytosanitary (SPS) measures, technical barriers to trade (TBT), Trade of Services, Investment, Trade Defence, Competition, State Owned Corporation, Government Procurement, Sustainable Development, Capacity Build and Cooperation, Legal Matters, and Intellectual Property.
The major elements of the agreement are Tariff Reductions and Facilitation of Trade in Services and Investment. The Intellectual Property section commits Vietnam to a high level of protection beyond the standards of the TRIPS agreement. The IP sector of this Agreement includes copyrights, patents and other commitments related to pharmaceuticals and Geographical Indications (GI).  When the EVFTA takes effect, 169 of the EU’s GIs will be protected in Vietnam and 39 of Vietnam’s GIs will be protected in the EU, all of which are for agricultural products and foodstuffs. This aspect facilitates some types of Vietnamese agricultural product branding activities in the EU. This Agreement also allows new GIs to be added in the future. In the pharmaceutical sector, data protection will be improved and there will possibly be a patent extension of up to two years available in the event of delays in obtaining marketing authorization.
The intention is also that EU innovations, artworks and brands will be better protected against infringement through stronger enforcement provisions in Vietnam.
Although at present only principles have been agreed, so we are still awaiting the final legal texts, the EVFTA is being heralded as a ‘win-win agreement’ to boost trade activities and strengthen relations between the EU and Vietnam.