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Tuesday, July 22, 2014

Pharma Anton Pillar raids in the Philippines

Few civil search and seizure orders are made in SE Asian countries so a Philippines pharmaceutical patent case is a great example of its use. Etoricoxib is an anti-inflammatory drug made by international pharma company MSD (a.k.a. Merck & Co. Inc. in North America). Etoricoxib is patented and protected in the Philippines by a patent valid until 2022.

MSD began a civil litigation case against infringers of its patent. A civil search and seizure request was filed with the Manila Regional Trial Court Branch 24. The order was then executed through raids. This involved both the court sheriff and the Philippine National Police's Criminal Investigation and Detection Group. The raids took place in June at Mark Ericson and Ferma drugstores in Rizal and Isabela provinces. The Sheriffs seized the infringing medicines which were branded Torico and Xibra which are believed to infringe the Merck patent.

The matter will now return to the Manila Regional Trial Court for the civil case to continue. 

Sunday, July 20, 2014

Thai World Cup rights saga decided but uncertainty remains


The World Cup is over - Germany won through sheer strength and more shots on goal; Argentina were brave and brilliant losers. A little like the Thai broadcast rights saga - the Thai government won with muscle and money, the rights holder tried valiantly and will fight another day.
RS Plc secured the broadcast rights for the 2014 FIFA World Cup's 64 matches. The Thai National Broadcasting and Telecommunications Commission wanted to apply something called the ‘must-have rule’ under the Frequency Allocation Act and the Broadcasting Act to the World Cup. This obliges a fixed number of sporting events to be shown on free TV. RS offered to show some games for free. The dispute went to court - see here for background. In the end, the National Commission agreed to pay Bt427 million to RS for the broadcast rights for all the World Cup 2014 matches.
The court case however rumbled on all through the tournament and the Supreme Administrative Court decided in principle that the must-have rule is law and is not trumped by IP rights. Commentators say the must-have rule violates the Intellectual Property Act, which provides to broadcast rights holders the exclusive right to manage their broadcasts freely. This makes it a WTO TRIPS breach potentially as well as opening Thailand up to more IP rights criticism internationally.

Sports organisers are concerned their broadcast rights might be violated. So Thai prices to buy these rights could be pushed up, as rights holders cannot ensure their broadcast signals are transmitted only in the granted territories because free to air signals can often be accessed elsewhere. 

Thursday, July 17, 2014

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!

Tuesday, July 15, 2014

Indonesia considers plain packaging for alcohol

Indonesia's government is mulling the use of plain packaging for alcohol, in the latest in the plain packaging debate. Some commentators have argued that government attempts to remove trademarks and limit packaging in areas like tobacco will lead to the same for less contentious products like alcohol, cosmetics and so on.

Indonesia already entered the tobacco plain packaging debate by filing a case at the WTO against Australia objecting to its plain packaging laws. At the same time it has regulations in place to limit trademark use on tobacco products - for more on these conflicting policies see here.

Now the government proposes to limit labelling on alcohol in an attempt to reduce alcohol consumption. The Deputy Trade Minister announced that regulations were being prepared and would apply to all alcohol content above 20%. There has certainly been a rise in spirits consumption as the country's middle class booms, leading to some health concerns about consumption. In general Indonesia being a Muslim country has relatively low levels of spirits consumption though.  Wine is limited due to high import taxes, but local and imported beer is widely consumed. These will be exempt.

A more serious problem is locally hand made (and unregulated) spirits like arak. And more seriously locally made spirits which are deceptively passed off as imported brands and periodically cause deaths - most recently last year on the holiday island Gili Trawangan off Lombok where methanol laced vodka killed tourists.

At this stage it is not clear if the rules will merely limit labelling space or whether like the tobacco regulations they will interfere with trademark use and registration.

Of course this is from a government which is leaving office in October, to be replaced by another, the result of which will be known after this month's presidential election results. But other sectors are seeing a rush of new rules in an attempt to finish the current government's work.

Sunday, July 13, 2014

Patent enforcement in Thailand

A Thai company Soi Ha Inter Group Co., Ltd lost several patent invalidations against Honda Motor Co patents at the Central Intellectual Property and International Trade Court.

The case began with a criminal action by Honda through the Department of Special Investigations against Soi Ha for importation and distribution of mini 4-stroke engines which Honda asserted infringed its patents. Thailand is unusual in having a criminal patent enforcement system. As often happens to counter attack,  Soi Ha filed a civil case to invalidate three of Honda’s patents. The IP/IT Court made its decision on 26 March 2014 dismissing the case.

The Court ruled that the patents were valid. Weak evidence of lack of novelty and obviousness was presented by Soi Ha (merely going to general principles about engine parts from textbooks which did not even concern technical issues or in-depth academic principles or analysis). Further the patents were clearly capable of industrial application.

Thailand is developing a relatively strong and well organized patent enforcement system, and for mechanical patents the criminal system is working quite well.

Thursday, July 10, 2014

Indonesian pharma counterfeits

The Ministry of Heath’s Food and Drug Monitoring Agency (BPOM) has undertaken a study of internet sales of drugs, traditional medicines, health supplements, and cosmetics. They found 302 websites selling fake items. The websites led to 58 businesses selling fake goods in Jakarta and 14 other cities.  Apparently they have seized some 1.3 million pills, traditional medicines, health supplements, foods and cosmetics and through the Ministry of Communications closed down 287 websites selling the fakes. The drugs included not only lifestyle products but cancer and heart disease drugs. BPOM say that the most commonly counterfeited drugs are antibiotics, analgesics, antihistamines, hormones and steroids, both patented and generic. BPOM has been conducting a campaign in 2014 called Operation Pangea to target fake health related products.

BPOM regularly announce such programs and cite wonderful data. However filing an actual complaint with them for action is harder than this would suggest. Their press releases are an excellent summary of the state of the market. However since counterfeiting cases almost never proceed through the (now almost completely non functioning) criminal prosecution system, presumably the vendors are back in business.

Monday, July 7, 2014

Trademarks data in ASEAN

The following data on trademark applications has been provided to the ASEAN secretariat by various SE Asian IP offices. NR percentages means Non-Resident i.e. foreign filings.

Multi class
53,196 (5% NR)
53,106 (NR = 5%)
Single class
37,656 (NR = 34%)
38,950 (NR = 40%)
Multi class
16,838 (NR = 47%)
18,611 (NR 43%)
Multi class
30,481 (NR = 79%)
34,928 (NR = 81%)
36,401 (NR = 82%)
Multi class
28,237 (NR = 24%)
28,237 (NR = 21%)
29,578 (NR = 23% )
Single class
26,370 (NR = (50%)
26,833 (NR = 60%)

Trademark statistics are notoriously hard to interpret and compare. Some countries have multi class applications - like Philippines and Singapore. So naturally their count will be lower than the single class markets like Thailand. And it depends how the data is counted in each case too.  So the numbers are not very useful for comparison.
A few facts can be gleaned. Local Indonesian applicants file vast numbers of marks. Data from Indonesia's IPO is however notoriously unreliable and the IPO's count of foreign applicants is certainly far below the real number. However relatively low levels of FDI in the non resources part of the economy probably does equate to fewer foreign filings than in other countries (however not to the degree this data suggests).   

In general one can see an upwards trend everywhere. In addition another general trend suggested is that the more open the economy (Singapore, Malaysia), the higher the foreign filings. The more closed, or not yet attractive to consumer-focused foreign investors (Vietnam, Indonesia), the fewer the foreign filings appear to be.

Wednesday, July 2, 2014

ASEAN regional IP cooperation - a mixed bag

Singapore is trumpeting its latest MoU signed with the National Office of Intellectual Property of Vietnam (NOIP). The somewhat vague deal promises collaboration, promotion, assistance to businesses, administration and capacity building, technology transfer, commercialization and IP valuation. Lofty aims but it is unclear how this will help patent owners. Vietnam’s patent system is largely fine. However too few patents are filed there and local innovation is almost nonexistent.   

The deal is probably more important to Singapore which is setting itself up to be a regional hub for IP in ASEAN. This is useful for many businesses that need a regional hub and Singapore is well positioned to be that. To be truly effective Singapore needs to be able to provide regional resources to businesses, which is its stated goal. 

Meanwhile all the ASEAN IP Office heads are in Vietnam this week to review progress of the ASEAN Economic Community’s IPR Action Plan 2011-2015. Various initiatives to harmonize ASEAN’s IP systems in time for 2015 are under way. Despite the optimism at this meeting and stated 'progress' it is not at all clear how this will help IP owners in the region. The Madrid system is still not implemented in some countries, notably Indonesia and the precise details of what harmonization will look like remain vague. At present it seems limited to IP office practice only.

The main regional success seems to be the ASEAN Patent Examination Co-operation (ASPEC) program which reduces the cost and time to obtain patents in ASEAN countries. So far all patents which received ASPEC requests received first office actions within 6 months – very fast for the region. This is possible as examiners can use other office's reports for corresponding patent applications.

Tuesday, July 1, 2014

Indonesia increases its trademark fees

Indonesia has issued a new regulation increasing trademark costs. From 3 July official fees will increase. Fees for one application are currently IDR 1 million (just under USD100), but the new regulation states this will cover up to 10 items in the specification for each class. For each additional 10 items, another identical fee will be charged. So for example an application in classes 25 and 35 covering 24 and 8 items in the specification respectively, will be calculated as below:  Class 25: IDR 3 million plus Class 35: IDR 1 million, totaling IDR4 million (just under USD400).  Multi-class application are available, and the same fees apply, currently IDR 1 million (just under USD100), per class. So the 2 class example above will in effect bear twice the official fees now.

Whilst fee increases are never popular, Indonesia does charge too little for IP compared to other countries, which is reflected in the relatively lower quality of the infrastructure and results from the IP office.  Lets hope they invest the increased fees in better services for customers.

Monday, June 30, 2014

Philippines Customs improvments

IP Komodo has learnt of more Customs seizures at Philippines ports. See the link below right for Philippines Customs for previous news.  

In late May Customs Commissioner John Phillip Sevilla (a former Goldman Sachs trader) spoke to the media and outlined how drastic leadership leadership and leadership changes (such as firing customs officers complicit in smuggling!) were starting to “uproot corruption by rebooting customs”. Ports rationalization, better coordination with the Internal Revenue, adoption of best international customs practices, implementation of the agency’s international commitments, and updating the outdated Tariff and Customs Code of the Philippines were under way. The problems the agency faces he said included too few Customs offices, only 994 computers with limited Internet access, low salaries and a credibility problem. However new performance targets, new hiring, overtime pay, more computers, a paperless office are all in the pipeline now.

These developments are attributed to criticism of the "Bureau of Corruption" by President Aquino in his State of the Nation Address last July.  This really bodes well for IP holders, as Customs act on suspect shipments. File your recordals now!

Wednesday, June 18, 2014

Counterfeiting in Indonesia

A rare IP raid

The Jakarta Globe newspaper reported last week on Indonesia’s reputation for fake goods. They cited 2 interesting examples in recent months. The first was a military general who admitted buying fake watches. He threw his purportedly $100,000 limited-edition watch on the ground in public to bolster a claim that it was a cheap fake (to avert suspicion that it was real - leading to a more damaging investigation!) Another incident cited was an Indonesian-born wine dealer in the US  convicted of selling fake wines after his vintage wine business failed.
None of this is new; Jakarta’s markets have always sold every kind of fake goods, in recent years made easier by the ASEAN China free trade agreement. While some items like personal care, foods and apparel are locally made, any complex fake product is imported from China (and often smuggled too!) The lack of a Customs IP border protection system makes importing fakes easy.
The police say they are cracking down on counterfeiting. However police demands for money to solve commercial crimes mean no-one files IP complaints with the police anymore. The newspaper reported that retailers don’t take such crackdowns seriously -  the Indonesia Shopping Center Association very was skeptical of claimed police action.

The IPO’s tiny IP investigation team is far too small to make an impact, the newspaper reports – which is also consistent with IP industry views. At present they have no facilities to store fake goods so have stopped making seizures altogether. And the 3 months time lag for complaints makes it the slowest IP raid system in the world! 

With Indonesia still on the USTR’s Priority Watch List criminal IP violation remains a serious problem, a symptom of the wider failure of law enforcement in the country.  Both of the presidential candidates aim to improve corruption and law enforcement, they said in the first presidential candidate debates. Perhaps new leadership may change the IP situation. Roll on October when the new government and president takes office.