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Friday, October 2, 2015

Draft Patent law in Myanmar

Foreign investment in Myanmar has increased rapidly over the last year and, despite some continuing difficulties, is likely to continue to do so. The establishment of a sound IP system will, however, be crucial to ongoing development. The government is currently in the process of introducing an international level of IP protection  - the publication of a draft Patent Law in July 2015 is part of the process.  The draft law aims to protect technical innovation and promote both foreign investment and local industrial development. 

This article summarises both the current system and the provisions of the proposed new law.  It also highlights some matters to which rights owners should be turning their attention before entering the Myanmar market

The current system
Currently, there is no patent law in Myanmar.  Following the Military Government’s repeal of the Patents and Designs Act 1945 in 1992, an invention may be registered under section 18(f) of the Registration Act and a Declaration of Ownership filed with the Myanmar Registry Office of Deeds and Assurances. There is no formality examination, opposition or publication in a patent gazette; applications are simply checked to see that they comply with the requirements of the Registration Act.   If the invention is misappropriated by a third party, an action may, in certain circumstances, be available under the Penal Code.  Perhaps not surprisingly, no such action has been taken to date.  There are also provisions for the registration of technology transfer agreements under the Science and Technology Development Law.  These agreements will not be enforceable unless they are so registered, per the table below.

Existing Laws for IP Enforcement
Type of IPSubstantive LawRelated Laws
Patent                            NoneRegistration Act (1908)
1. Registrable under section 18(f) of the law
Patent NoneSpecific Relief Act (1877)
1. Temporary/Perpetual Injunction (Section 52 of the law)
2. Declaratory Decree for ownership right (Section 42 of the law)
Patent NonePenal Code
1. Criminal misappropriation of property and a term of imprisonment may extend to two years or with fine or with both. (Section 403 of the law)
PatentNoneScience and Technology Development Law (1994)
1. Technology Transfer shall be registered and if not, there shall be no right of instituting a suit based on a contract of Technology Transfer. (Section 15 of the law)
The draft Patent Law 
Myanmar is a member of both the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO) and a signatory to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.  It is required to have TRIPS compliant IP legislation in place by 2021.  The draft Patent Law is a step in that process.   The law is likely to be enacted no later than June next year, but when it will come into force is less certain: section 1(b) of the draft provides that the law will come into force on a date to be prescribed in a President’s Notification. 

The 21 Chapters of the draft include the following provisions.
Pursuant to Chapter (5), Section 7, to be patentable an invention must:
(a) be novel;
(b) involve an Inventive step; and
(c) be industrially useful.
‘Novelty’ is explained as follows:
“The invention shall be considered to be new if it does not form part of the state of the art.  The state of the art means the technology which was available or published to Public by means of printing, oral description, by use or in any other form at any place before the date of filing of the application or the date of priority claims if such claim has been applied.”
Section 8 excludes the following from patentability:
  1. Discovery, Science Theory, Mathematical method;
  2. Schemes, rules and methods for performing mental acts, playing games or doing business;
  3. Computer Program (we suggested to protect computer program if it is acceptable as a Patent.);
  4. Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
  5. Living species, plants natural organs of living things or  living things, small living things or abstract from those things;
  6. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods;
  7. Inventions related with things including natural things, new usage and new form which was available in public or chemical products which have been specified in rules and regulations;
  8. Restricted by Myanmar government for environmental protection;
Section 31 provides that if an application in respect of the same invention has been filed in any member country of the Paris Convention or WTO within 12 months of filing in Myanmar, priority may be claimed on the basis of the earlier application. The applicant must supply a certified copy of the earlier application within three months or, pursuant to section 23(a), a further two month period. 
  1. Although there has to date been little point registering an invention under the Registration Act, it may now be advisable to consider doing so.  Although the draft does not currently provide for priority on the basis of such a registration, this has been the subject of discussion and it is still possible that such a provision will be included.  In any event, if an application has not been filed in a Paris Convention or WTO member country, consideration should be given to such a filing as the draft provides that these can form the basis of a priority claim.
  2. Both trade mark and copyright laws are currently more developed than patent laws in Myanmar.  Wherever possible, therefore, invention owners should be looking to take advantage of these laws wherever possible.  As Myanmar is not a member of the Berne Convention, however, copyright protection is available only to the works of citizens of Myanmar or works that have been first published in Myanmar. However that may soon change and software may thus be protected uner copyright in the near future.
  3. IP owners should, where appropriate, also be looking to register their rights with Customs.  The system will change to an online system with the introduction of the  ‘Myanmar Automated Customs Clearance System’ (MACCS) in November 2016. The online system will cooperate with the Ministry of Commerce and the FDA (Food and Drug Association) of Myanmar to tackle the importation and exportation of fake and counterfeit goods and probably also parallel imports. 



Thursday, October 1, 2015

Online trademark renewals will start in Indonesia

Image result for trademark symbolIn its latest round of automation steps the Indonesian IPO announced that it would soon start online trademark renewals. At present all documents must be physically filed which is time consuming and expesnive. The IPO will set up a process to allow agents to register and use a new online renewals system. First agents must register, set up an online payment system via local banks, then make online payments and apply for trademark renewals. One of the reasons stated is to reduce physical encounters with government employees to minimize fraud/corruption.

Sunday, September 20, 2015

Civil trademark infringement in Indonesia

Image result for LION SUPERINDOSoeharso, an Indonesian businessman had owned the mark OBOR in class 30 since 1990 and gave a 4 year licence to Gunadi Prasetyo (the first Defendant ) to use the trademark on rice and sugar products. The Defendants included Lion a well known local supermarket. The plaintiff claimed Gunardi and Lion continued to produce and sell rice products under the OBOR trademark after the license had expired. No royalties had been paid. 
The Defendants tried to argue that the claim was premature since there was another pending case over validity of the mark brought by another party.  However the Semarang Commercial Court granted parts of the Plaintiff's claims. He was exclusive owner of the OBOR trademark and the Defendants committed infringing acts by using the mark without authorization. The Defendants were ordered to pay damages and stop their activities in relation to the mark.

The Defendants filed an Appeal, which was rejected by the Supreme Court. A further Reconsideration Appeal filed by the Plaintiff was also rejected.

The case shows how local parties often bring infringement cases more readily than foreign companies. It also shows there are courts outside Jakarta able to hear and deal with IP cases. 

Perhaps the most important element was the damages claim. The claim for IDR10.5 Billion (USD750,000) was rejected outright. The lower court ordered a far lesser sum of IDR75 million (USD6,000), however the Supreme court threw even this out. Damages claims remain tricky. Whilst crazy sums as here are commonly claimed, low awards are usually made by courts. Real evidence of losses must be provided to win any money.

Tuesday, September 15, 2015

Well known mark infringement case in Myanmar

Image result for Mitsubishi ElectricThe concept of well-known trademarks is not mentioned in the Registration Act or Criminal Code of Myanmar. As such, it remains unclear whether well-known marks are protected. On August 11, 2015, the Pabedan Township Court in downtown Yangon ruled in favor of Mitsubishi Electric Corporation in a trade mark infringement case against an importer and distributor of infringing breakers bearing the mark MITSUBISHI (Criminal Regular Case no. 380/2014  U Zayar Lwin, Mitsubishi Electric Corporation & PME Co, Ltd vs. U Hla Myint).

The Defendant was condemned to a fine and imprisonment under Section 486 of the Criminal Code. The Court ruled that "The Plaintiff's products have been officially distributed by PME Co., Ltd and sold worldwide under the famous trademark Mitsubishi registered in more than 140 world nations. The Defendant has been running a shop selling electrical products for more than 40 years and based on evidence provided by the Plaintiff, the famous character of Mitsubishi cannot be unremembered or unknown to the Defendant."

In determining of the sort of factors that constitute whether a mark is regarded as well-known, the court looked to the degree of recognition by the relevant sector of the public in Myanmar, the duration, extent and geographical area of the use or promotion of the mark, the sort of registrations or applications for registration and an assessment of value associated with the mark in Myanmar and abroad. This decision brings hopes to trademark owners in protecting and enforcing their marks in Myanmar and should create a pathway to the long awaited draft trademark law to also protect well known marks. 

Wednesday, September 9, 2015

Indonesia's new copyright royalty systems

 Image result for musicThe 2014 Copyright Law created a framework for collecting societies to operate in Indonesia. See here for the previous ad hoc ones that operated. Now a Ministry of Law and Human Rights Regulation No. 29 of 2014 on the Guidelines of Application and Issuance of Operational License and Evaluation of Collecting Management Society provides the detail. 

The Copyright Law expressly allows authors, copyright holders and performers to be members of collecting societies in order to manage and collect royalties from the commercial use of their copyright and neighboring rights. It states that collecting societies should be non-profit and must be licensed by the Ministry. The new Regulation governs the license process. It sets minimum numbers of members and specific authorizations relating to collection of royalties to be obtained from the authors, copyright holders and performers using Powers of Attorneys

2 specific National Collecting Societies are to be set up as the parent organizations covering music rights - one to represent authors' interests, the other to represent performers. As well as all the other rules, National Collecting Societies have additional obligations to devise ethics codes, supervise members and to provide guidelines for the licenses for their member collecting societies as to collection, royalty rates and distribution and also to mediate disputes. The Ministry appointed a number of commissioners to oversee these National Collecting Societies.

Monday, September 7, 2015

Thai plagiarism dispute rumbles on

Image result for amazing Thailand logo

A UK agricultural consultant and longstanding Thai resident Dr Wyn Ellis was arrested at Bangkok airport last week - the latest horror in a longstanding IP related dispute.

It began in 2008 when Ellis found extracts of an old report on organic agriculture that he had prepared for the Thai government copied in a dissertation from a PhD student at Bangkok's top Chulalongkorn University. Upon further research he found most of it was plagiarized.  Unfortunately the student was Mr Supachai Lorlowhakarn the director of Thailand's National Innovation Agency (NIA), which is the Thai government body responsible for finding and investing in new Thai companies and a driver of IP protection in Thailand.

Dr Ellis reported the student. The university initially did nothing. The NIA director filed a number of court cases against Dr Ellis, including criminal defamation. A campaign of harassment began against Ellis. A journalist reporting the case was also sued and had to leave the country. By 2012 the University had investigated and revoked the PhD, criminal charges were filed against the NIA director and he was forced to leave office. Eventually Ellis won or settled all the court cases, by 2014. The battle seemed over. But in one last gasp a 2009 immigration blacklist entry has led to Ellis being detained as a national security threat.

The case is reported widely due to the IP issues, the fact of the official being director of a key innovation organization and because of extreme use of official power.

Wednesday, September 2, 2015

Tencent beats pirates in Indonesia

Image result for tencent qq

China's Tencent, operator of the QQ instant messaging service, has brought  a cancelation action against a local trademark owner, Susanto. Tencent owned some class 9 and 38 registrations. Susanto had registered several marks that were similar and identical: QQ, QQ KIU KIU and QIU QIU. Tencent claimed they were made in bad faith and blocked their own new applications.

The Central Jakarta Commercial Court and later the Supreme Court found in favor of Tencent. A straightforward case perhaps? Given the brand is well known only really in Greater China maybe not so. But great that Chinese companies are asserting rights and the Jakarta courts are making good clear sensible decisions.


Friday, August 28, 2015

Online secondary liability and e-commerce

Image result for mobile shopping icon
The question of secondary liability for online intermediaries is one which is starting to gain importance in SE Asia. There are no clear global rules - the 1996 WIPO Copyright Treaty has only a general definition and is now somewhat out of date.  SE Asia has a several common law countries, where contributory liability can exist. It also has civil law jurisdictions where it may be necessary to look outside IP laws to civil codes where there may be acts of collaborating or assisting illegal acts. In Thailand and the Philippines the IP laws only cover copyright secondary liability, not for trademarks.

One problem is that the usual primary acts of copyright, communicating and distributing illegal copies may not apply to the newer classes of internet intermediaries which are assisting others to do those infringing acts. At the GFIP in Singapore this week the issue arose several times, whether secondary liabilities really existed everywhere or whether all intermediaries like payment providers and advertising networks were covered.  

Meanwhile online shopping is booming in SE Asia  Alongside the global platforms like Ebay are regional ones like Lazarda/Zalora, as well as local ones like OLX in the Philippines, Weloveshopping in Thailand and Kaskus in Indonesia attracting millions of users every month. The SEA region needs to look hard at this area and figure out how to play legal catch up with the e-commerce its citizens are engaged in.


Wednesday, August 26, 2015

Singapore counterfeit goods transshipment

Image result for singapore container port
IPWeek@SG closed today. IP Komodo espoused in the last talk one final message that Singapore address the issue of transshipment of counterfeit goods through the island state. Singapore is the largest transshipment port in the world, which unfortunately means it is transshipping a vast quantity of counterfeit goods - probably unknown to it.  Singapore earns a lot of money from this, charging shipping lines and storage charges for containers.

Meanwhile with no customs recordal and limited ex officio action, it is up to brand owners to try and divine what counterfeit goods are passing through Singapore and report it to Customs. And then engage in pricey civil litigation to detain and destroy goods. Clearly a civil court seizure system is inappropriate for what is essentially a volume problem - vast quantities of counterfeit goods passing through Singapore en route to other ports worldwide.

What Singapore needs to do is conduct effective Customs risk assessment analysis and intercept suspect shipments passing through the port, then report to IP owners. But first establish a system whereby once illicit counterfeit goods are identified then upon notification to the shipper to justify why the goods are not fake (in which case it can go to court - very rare), then the goods should be destroyed.

Then Singapore can rightly claim to be the region's IP hub. Right now the issue of transhipment causes more than a whiff of suspicion from brand owners.



Tuesday, August 25, 2015

ASEAN harmonisation - multilateral and bilateral solutions

The ASEAN Working Group on Intellectual Property Cooperation (AWGIP) is the ASEAN group responsible for IP issues. Made up of all the IP offices from each of the 10 countries, Singapore has just passed the rotating chair to Brunei. Dr. Cham Prasidh, Cambodia's Minister of Industry and Handicrafts spoke at IP Weeks GFIP conference in Singapore this week. AWGIP has been in operation since 1996 and has held 47 meetings he said, suggesting not enough had been achieved yet. A key challenge he said is assertions of national sovereignty over IP. ASEAN governments often play this card in AWGIP discussions on IP, which frustrates harmonisation.  This is despite the process to enable the free flow of goods, services and people under the AEC being formed in late 2015.

Bilateral attempts are being made to speed up harmonisation therefore. Cambodia has put in place a 2 in 1 package to extend Singapore patents and designs to cover Cambodia too.  In fact it's a fast track system which dispenses with local search and examination in Cambodia. The hope is to extend this to other countries in due course. 

ASPEC is another step, but this merely fast tracks the examination part and doesn't speed up patent grant enough. 
IP Komodo notes that sometimes bilateral steps are necessary to accelerate IP harmonisation. 

Monday, August 24, 2015

Singapore IP week starts

Singapore is holding its IP week in the island city this week. Led by IPOS and its IP Academy, there are 8 IP events on this week. These include the ASEAN Working Group on IP Cooperation, (a meeting of the region's IP offices), several IP conferences including the Global Forum on IP, (Singapore's biannual flagship IP event), together with seminars run by the USPTO and UK IPO, MIP, WIPO, and Marques.  Some 800 professionals from the IP world are here, at what is now the SE Asian region's largest IP gathering. Speakers from industry, IP offices, IP industry associations and private practice are here, including the odd lizard. 

Sunday, August 23, 2015

Dissimilar goods in the Philippines

Image result for kolin electronics

In Kolin Corporation Ltd v Kolin Electronics Co, Inc, the Philippines Supreme Court got to rule on a question of when goods are similar or dissimilar for trademark law purposes. Both companies owned the marks KOLIN for different goods in class 9. The case began with an opposition filed by Taiwan's Kolin Corp. who owns KOLIN for TVs and DVD players. The Philippines company Kolin Electronics makes power supply products and also registered its mark in Class 9.

The case proceeded through appeals to the Supreme Court. The key question was whether the goods were similar, or not, even though they both fell in class 9 under the Nice Classification. The Court's view was that Nice was not the 'sole and decisive factor' but 'similarity of the products and not the arbitrary classification or general description their properties or characteristics' was the right test. Clearly TVs are not the same as power supply products. The latter especially were not consumer goods bought by the casual buyer.

It is an obvious point and one reinforcing earlier cases, especially given class 9's breadth. But such decisions help set clear precedents for future arguments. The problem is that anyone who disagrees because they are on the wrong end of this argument can still appeal all the way to the Supreme Court delaying their case for years.