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Sunday, August 31, 2014

Facebook doesn't 'Like' Vietnam restaurant using its brand



A restaurant in central Ho Chi Minh City (Saigon) called Nang Ganh has become embroiled in a fight with Facebook.  The owner Ms Nguyen Thi Thanh Nhan originally began selling food online then decided to open a restaurant. Having a background in marketing prompted her to use Facebook to raise money, which led to loans from 160 people, which enabled her to open the restaurant.

She then added a slogan “First restaurant built on Facebook” to her business, as a description. This appeared on signs, menus, bags and promotional items. She also made a trademark application including the slogan.

However the brand soon appeared on a lawyers’ cease and desist letter rom Facebook's attorneys telling her to stop this trademark infringement.  Ms Nguyen has protested in the media that she was using it descriptively since Facebook helped her found her restaurant, that being the truth. She has said she plans to contact Facebook over this.

Mere descriptive use on dissimilar services is going to get her into a tricky trademark law areas. However making a trademark application including Facebook, is not going to be acceptable.

Thursday, August 28, 2014

Singapore continues its mission to be an IP hub in Asia



At the Global IP Forum in Singapore this week the Singapore government continued to promote the island state as an ASEAN IP hub. Its IP Hub Master plan capitalizes on the fact that Singapore is regarded as a safe pair of IP hands.  Mr K. Shanmugam, Minister for Law highlighted in his speech a number of areas they are working to develop Singapore:



-        Improvements in patent pendency and quality driven by IPOS, along with PPH systems with major countries and the ASPEC system in ASEAN

-        Increasing IP ownership at SMEs through an education program and IP advisory service

-        A new IP financing program where 3 participating local banks will loan against IP, backed with a government guarantee

-        An IP Valuation and Commercialization program at IPOS called IPValueLab to promote commercial deals involving IP

-        A series of ADR systems for IP disputes designed to simply and reduce costs for disputes, including creating a panel of IP arbitrators and a patent expert determination system

Singapore is gunning to win regional hub status for IP by putting in place world class IP infrastructure, focused in commercialization of IP. IP Komodo is keen on seeing how many IP transactions and deals flow now to Singapore.

Thursday, August 21, 2014

Vietnam's uncertainty over unfair compeition

One of the problems in the legal environment in Vietnam is the government’s habit of enacting laws over the top of existing ones. This leads to uncertainty over which rule apply, even outright conflicts. A new unfair competition regulation issued in July illustrates this problem. Decree 71 was issued to set out remedies for unfair competition violations.  However a 2013 Decree 99 already covers sanctions for IP violations including unfair competition. 
 
The first problem is the bodies who deal with unfair competition. Decree 71 says it is the Competition Authority at the Ministry of Trade and Industry. Whereas Decree 99 permits a variety of bodies, who normally handle IP cases. Secondly the procedures specified differ, with Decree 71 laying down specific new procedures, while Decree 99 adopts pre-existing ones. A third point is different levels of fines are imposed. For example one offence of passing off has a fine of 200 mn VND in Decree 71 and 500 mn VND in Decree 99. There are increased fines for cybersquatting, trade secret theft and so on, which is good news, but only if you use the new Decree!
 
The general rule is that the later decree should apply, if it is unclear which should be used. This potentially takes a wide range of IP related unfair competition violations out of the hands of existing IP authorities and off to a new department. It is not at all certain that this was intended; authorities are often protective and try to retain jurisdiction so we fully expect the existing authorities to continue to hear cases. We will only know how this will pan out once the decrees start to conflict and decisions get made. It is quite common for parallel jurisdictions to run for years.
 
 

Tuesday, August 19, 2014

Philippines enforcement improvements


IP enforcement in the Philippines has long been a painful affair. First an IP holder had to find evidence of infringement (usually via a P.I.), then ask the NBI or Police to conduct a raid. Then they applied for a search warrant, with the IP Holder's attorneys. The court often took all day so a raid could not start until the next day. The NBI or Police then conducted the raid to seize the fake goods. Then the IP holders attorneys had to return to court to file the results of the search warrant execution. IP holders had to pay their own storage costs and the case would take many years to conclude after it was passed to the DoJ for investigation then to the court for criminal prosecution. Tip offs, unreliability and disappearing defendants were common. Because  it was so time consuming and costly, IP holders could only manage a few raids a year at best, leading to limited deterrence.

So the IP Office decided to get in on the act and set up their own enforcement team to help improve the system. This began with the Amended IP Code ( Republic Act No. 10372), which established the IPR Enforcement Office at the IPO. It can take complaints on IPR violation and then can act by conducting inspections and raids on infringers. Further the IPO has also said it will ask the Anti-Money Laundering Council (AMLC) to freeze the bank accounts of suspects. A very interesting angle is that the IPO Enforcement Office has a variety of enforcement options to choose from - warning letters, raids, filing of administrative cases etc. They have in fact been varying the actions they take too. 

Although the focus tends to be the rather blunt measure of number of goods seized, the real test will be in having more regular raids carried out under a more efficient and less time consuming system that the current one, which actively discourages IP holder involvement through its complexity. Of course raids are only the first step, infringers still need to be prosecuted for the system to have the full deterrent effect. But let's hope the IPO enforcement system is will at least make the raid stage easier and more effective. A variety of cases have now been undertaken and we will start to see the results in the coming months.

Sunday, August 17, 2014

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 corruptionImproving enforcement seems to be part of that.

Friday, August 15, 2014

Philippines San Miguel Foods sued in the US


Asian companies are increasingly expanding around the world, which leads them into IP conflicts. Chinese IT product makers having products blocked from US entry by the US ITC for patent infringement is a longstanding pattern. In SE Asia IP Komodo has written about Thai companies that were found infringing US unfair competition rules due to poor software policies, leading to misuse of pirated software on their IT systems. Another area of failure to preparing to enter new markets carefully.
 
A large Filipino company San Miguel Pure Foods Co. Inc. that sells food under the Magnolia brand is in litigation in the US with a local company Ramar International that owns the Magnolia brand in the US.  A California court has now ordered San Migeul to pay a fine for breaching a court order barring it from selling Magnolia branded chocolate milk and powdered drinks in the US. Ramar owns an almost identical trademark to Magnolia label and logo.
 
Too many Asian companies take the view that they do not need to consider IPR issues when they sell abroad. They tend to ship and sell goods without preparation, so some end up in complex and expensive litigation over their IP. The correct strategy is to plan new markets with clearance and freedom to operate searches and advice.  As more Asian companies grow into multinationals in the coming years such disputes will arise unless they become more proactive at IP planning.

 

Wednesday, August 13, 2014

New ISP content blocking rules in Indonesia


The Ministry of Communication and Information (“MCI”) has issued a new Regulation called  Controlling Internet Websites Containing Negative Content (“Regulation”). The Regulation has the goal “safe and healthy use of the internet”. It sets up a system to block access to websites containing pornographic or other unlawful material. There are several elements: reporting and logging negative content, blocking of access to reported websites by ISPs and unblocking systems too.  A database called “TRUST+ Positif” lists sites with negative content. ISPs must update their systems weekly or on demand by the MCI. On non ISP systems such as Facebook, the MCI can request the websites to owner to block or delete the negative content. ISPs that that fail to comply may have criminal and administrative liability under several laws including  the Telecommunications Law and the Information and Electronic Transactions Law and the Law on on Pornography.

A corollary for IP owners is that the Draft Copyright law contains ISP safe harbour and secondary liability provisions and the hope is that clear takedown processes will be established outside the current slightly uncertain Electronic Transactions Law framework.

Tuesday, August 12, 2014

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. 
 

 

Sunday, August 10, 2014

The Philippines courts slow-cooks famous restaurant case


IP Komodo has written how effective the BLA is becoming at civil IP litigation. A long running Philippines civil IP dispute shows the flip side - using the general civil courts. MAKATI SIZZLER was registered as a trademark in 1989 for a restaurant allegedly in operation since 1979 by Makati Food Service Systems.   

Sizzler Restaurants International had 2 registrations from 1988 including “Sizzler” for restaurant services.  It sought to revoke the mark. The case proceeded through multiple levels up to the Court of Appeals (CA). The question was who owned rights in the term “Sizzler” in the Philippines. The court held Sizzler was a famous  trademark protected by the Paris Convention and that MFSS failed to show rights to the mark.   The evidence of prior use was weak they said. Anyway it was confusingly similar and should not have been granted. “ This is because there existed a resemblance, exact similarly in sound, spelling, pronunciation, and commercial impressions of the word ‘sizzler’ which was the dominant portion of private respondents’ marks”.
 
All well and good, but justice delayed is a costly exercise for the IP owners.

Thursday, August 7, 2014

When copyright becomes monkey business!

An Indonesian black macaque has started a copyright controversy. 3 years ago a British photographer David Slater was in Sulawesi in Indonesia photographing endangered primates when one took his camera and made a number of photos. The best one is a wonderful selfie! 

Wikipedia somehow got hold of a copy and put it in its free database. Now Slater plans to sue for copyright infringement claiming he owns the copyright and is losing royalties. Wikipedia says the monkey took the photo so "This file is in the public domain because as the work of a non-human animal, it has no human author in whom copyright is vested," said Wikipedia.

I wonder if anyone has checked the Indonesian copyright law; after all that is the applicable law if the monkey took it! Hmmm now is he an Indonesian national under the Berne Convention...?





 

Wednesday, August 6, 2014

Weak R&D in Vietnam


A report by Vietnam's Ministry of Science and Technology (MST) helps to show why innovation levels are so low - as IP Komodo has reported by the paucity of Vietnamese patent filings globally - see here.
 
MST says that about 2,000 organizations in Vietnam have R&D activities; in 2011 Vietnam had 134,780 R&D workers. Many are support staff with only 105,230 doing scientific research; half at universities where most are also lecturers. As such the real numbers on full time research are much lower at 67,223 - that is a ratio of 0.0007 per million people; a fraction of the 4,650 in the US (in 2007), 936 in China (2011), 5,451 in South Korea (2010), Singapore 6,307 (2010) and Malaysia 1,643 (2011).

Vietnam also spends less on R&D. Vietnam’s GERD (Gross domestic expenditure on research and development) was USD $0.25 billion - a ratio of expenditure on GDP of 0.21 percent. Again a fraction of the US - 2.77 percent in 2011 and China - 1.84 percent in 2011.

Patent filings do indeed appear to reflect reality.

Monday, August 4, 2014

Philip Morris loses to trademark pirate in Philippines


 
 
 
 
A cigarette dispute in the Philippines has reached the Court of Appeals. JACKPOT was registered by N.V. Sumatra Tobacco, an Indonesian cigarette company quite well known for registering other tobacco brands around the region. In 2010 Phillip Morris purchased Fortune Brands, which makes JACKPOT cigarettes.  The application to register the mark in the Philippines at the IPO was refused for conflict with Sumatra Tobacco’s mark. Philip Morris appealed to the Bureau of Trademarks and IPO Director General, then to the courts after repeated refusals.
 
“Once the trademark gets registered, its validity is prima facie (on its face) presumed as well as the registrant’s ownership thereof. In this case, petitioner failed to overcome this presumption,” Associate Justice Amy C. Lazaro-Javier said. The Court of Appeals said the IPO Director General had correctly applied the “dominancy” test in evaluating similarity – the legal standard based on which dominant features a consumer sees when two similar products are compared side by side. The packs, they said looked similar the word Jackpot is the same, predominantly featured on both labels. “While it is true that subject mark (PM’s) has a more elaborate design than the cited mark, this difference or variation is insignificant”.
 
There is more to this than meets the eye. There is no mention of bad faith, which is usually pleaded in cases against Sumatra Tobacco, given how many trademark cancellation cases they have been involved in all over SE Asia (e.g. Malaysia, Indonesia, Thailand).  Phillip Morris presumably may have to stop sales of Jackpot cigarettes in the Philippines, or perhaps buy the brand from STTC.

Thursday, July 31, 2014

New product labelling Rules in Indonesia

 

The Indonesian government has revised its regulations for labelling of goods and issued Regulation of Ministry of Trade No. 67/M-DAG/PER/11/2013 about Mandatory Labelling of Goods in Indonesian Language in November 2013. This regulation officially replaced the previous labelling regulation in force since 2010. Those rules obliged businesses to ensure product labels on goods were in Indonesian language.

The new regulations are is issued to comply with provisions of the Consumer Protection Law so customers have clear rights and know exactly what they are buying. The new labelling regulation has a  more thorough set of rules, such as the form of labels, how to apply for the Certificate of Labelling in Indonesian Language (Surat Keterangan Pencantuman Label dalam Bahasa Indonesia (SKPLBI)) etc. Much of this was lacking in the previous regulation.

The new regulation also refers to the new system for export/import permits called INATRADE. This is an online Indonesian national single window service which enables importers and exporters to obtain and SKPLBI more easily online.

 

 

Saturday, July 26, 2014

Philippines IPO decisions forgiving of delays







IP Komodo has noticed a number of decision reports from the Philippines where the IP holder taking action has not always acted swiftly or effectively, but substantive justice is still granted.

In the case of Total SA v Bryan Distributors & Services, Total had sought numerous extensions of time to oppose a mark, yet still failed to oppose in time. It is not clear why or whether there was an error. The end result was that Bryan got a registration for PROTEC covering lubricants, a similar mark to Total's PROTEC mark.

Later when Total filed to cancel Bryan's mark, Bryan countered with an argument of inexcusable delay and that they should have dealt with this at opposition stage. The IPO's Bureau of Legal Affairs (BLA) held that delays and failure to oppose do not prevent cancellation actions being brought and found for Total that they had a prior right and cancelled Bryan's mark.

The case is notable for the fact that the IPO's BLA so starkly contrasts with the Philippines court system where endless delays, frequent procedural challenges and pointless challenges make getting substantive justice extremely difficult.

Friday, July 25, 2014

Copyright blues hit karaoke clubs in Jakarta


5 Jakarta karaoke clubs have been implicated in a racket to  illegally download and compile pirated music videos for display in karaoke music clubs in the capital.  The clubs are owned by some well-known personalities. A criminal copyright raid was conducted in Tanggerang west of Jakarta on the content supplier to some 75 karaoke clubs The police seized computers, laptops, DVDs and various documents and one arrest was made.  News reports suggest this is a longstanding practice, with this supplier in operation since 2008, and that the clubs purchased the music videos each month, so the supplier essentially earned all its money from piracy.

The detainee is to be charged with distribution under the copyright law and possibly money laundering. The case was initiated after a rock musician Moldy from Indonesian guitar band Radja reported the misuse of his songs and videos. He claimed that his record label was cutting his earnings due to the prevalence of pirated music taking away sales. An attempt to discuss the matter with the clubs did not succeed so a complaint was filed at with MABES, the national police in January.
 
Although the supplier is the primary infringer the karaoke clubs were implicated as secondary infringers. The 5 karaoke clubs involved are high profile and have agreements with the supplier which may be material.
 
Copyright piracy is one of the only areas of IP that sees any enforcement in Indonesia, mainly at the behest of the strong local music industry.