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Sunday, July 26, 2015

How to measure the volume of raids and seizures - Indonesia, Philippines and Thailand comparative data

Indonesia's IPO investigation team has published its latest figures about enforcement raids. It still makes disappointing reading that only 9 raids have taken place in 2015 so far. The police probably handle a few more, but they do not publish and due to their reputation for demanding operational costs for economic crimes, few IP holders can use them.

Statistics / data 2011-2015
Intellectual Property Cases
Industrial Design

Comparative data from elsewhere isn't always ways to find. So how do we measure Indonesia's 17-34 raids per year - lets say 50 if we include police raids.  
In the Philippines they measure the number of products seized. This always sounds better because they can talk of millions of dollars, but basing fake values on real values isn't entirely accurate. That said the Philippines enforcement bodies say they will seize over P13 billion ($287.57 million) worth of fakes in 2015. On July 7 Intellectual Property Office of the Philippines (IPOPHL) announced this target. In the first 6 months of 2015, Philippines authorities have seized some P775 million ($17.15 million) worth of counterfeit and pirated CDs, DVDs, books, medicine, designer bags, shoes, and other items. This does not exclude FDA (Food and Drugs Administration) and Bureau of Customs data which was not yet included.  Whilst they don't say how many raids this took, the expectation is that it would have been thousands of cases, because Thai data does break both out.
Thailand's police publish statistics on all raids by all departments.  In 2014 the data shows:
Trademarks  - 5,974 cases - 817,792 items seized
Copyrights  -  3,592 cases  - 308,235 items seized

It is hard to know what calculation would be needed to value the goods, but assuming say 25 USD a product that would take the value to USD28 million. The Thai data doesn't include Customs, but they seized hundreds of thousands of products in 2014 too.

What this analysis shows is that Thailand and Philippines are operating enforcement systems that seize4 large quantities f products through thousands of raids each year. Indonesia's enforcement therefore in comparison is almost non existent.



Thursday, July 16, 2015

Philippines - Korea PPH starts

Image result for patent prosecution highway
The Intellectual Property Office of the Philippines (IPOP) and the Korean Intellectual Property Office (KIPO) have started a 2 year pilot Patent Prosecution Highway (PPH) program. An MOU was signed between the two offices in April.

The PPH allows applicants to a fast-track examination by using the examination conducted by the office or vice versa. IPOP has similar agreements with Japan and USA.

This will most likely help Korean applicants in the Philippines at least initially. Applicants with corresponding applications in both countries can file a request for PPH examination It will apply to both national applications or PCT international examinations from KIPO.

Essentially by filing the relevant KIPO examination documentation with IPOP, IPOP can expedite the examination and Korean applicants can secure a faster grant and reduce the Philippines Office Action costs and fees.


Wednesday, July 15, 2015

Publishing copyright difficulties in Indonesia

Image result for William Marston's DISC Theory

A case on educational tools illustrates the difficulties in asserting publishing copyrights. The Plaintiff is the author and copyright owner of various behaviour assessment tools and materials inspired from William Marston's DISC Theory. The materials are registered copyrights in the USA and have been applied for under Indonesia's voluntary copyright system.

The Plaintiff claimed that the Defendant had been using, translating, reproducing and distributing the Plaintiff's material in a book without the his consent. The Defendant was previously the Plaintiff's authorized agent in Indonesia. Several of his books were alleged to have used parts of the Plaintiff's copyrights including the 'pattern description' and materials allegedly copied from the Plaintiffs website.

The Jakarta Commercial Court refused to accept the Plaintiff's lawsuit because the Plaintiff did not clearly state which copyrights (among many mentioned in the case) had been infringed by the Defendant. The Supreme Court rejected the Plaintiff's appeal upholding the Commercial Court.

It is always hard with complex copyrights comprising a series of creative works, asserted as a whole, to identify specific works that are copied. It is vital to break them down to specific works when making claims.

Monday, July 13, 2015

The Philippines' new Competition Law

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The Philippine Competition Act was ratified by the Philippine Congress on June 11 and is currently being reviewed by the Office of the Philippine President.

It outlaws anti-competitive agreements and abuse of dominant position, including mergers that achieve this, but does not prohibit market dominance or monopolies. It prohibits price fixing and bidding manipulation and agreements that substantially prevent, restrict or lessen competition, market carve ups as well as abuse of a dominant position.

It is well known that IP agreements can be caught by competition laws. Agreements that restrict competitors, unreasonably pricing, as well as agreements that seek to control the sale or trade of goods or services are prohibited. There is an exception for franchising, licensing and exclusive merchandising/distributorship agreements and agreements protecting intellectual property rights, confidential information and trade secrets.

IP holders will need to review their old agreements.

Tuesday, July 7, 2015

Indonesia seeks to regulate online commerce

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The Indonesian Ministry of Trade recently circulated a draft regulation directed at e-commerce businesses to be called the Government Regulation on Trade Transactions through Electronic Systems.

This proposed regulation attempts to regulate sellers of goods or services using electronic systems to facilitate sale transactions. Under the draft regulation, a  seller must secure the following licenses from the Ministry:

a. Registration Certificate as an E-Commerce Business;
b. Special business license for trading through electronic systems if a seller uses its own electronic system to sell their goods/services; and/or
c. Business license if the seller is a foreign seller.

On first look, companies such as Amazon will need to comply by setting up an incorporated vehicle in Indonesia, when the regulations come into force.

Under the regulation, any seller who executes a transaction with an Indonesian customer is deemed to be performing business in Indonesia notwithstanding their location.  This enables the court to have jurisdiction over any claim that a e-commerce customer may wish to bring within Indonesia. It is unclear if parties can contract out of this by agreeing to arbitration as alternative dispute resolution outside Indonesia. In any event historically this has been difficult.

The proposed regulation also attempts to regulate online intermediaries (EBay could arguably fall under this). Although the regulations require such businesses to be conducted through  locally incorporated entities with majority shares in the hands of local parties, the regulation also acknowledges a foreign entity providing such a service. Some clarification is needed on how the regulation applies to foreign intermediaries that do not have presence in Indonesia.

This could be part of a general policy to drive more FDI into Indonesia. It is unclear if the Indonesian government has thought through particularly how it would apply to thousands of individuals who peddle their wares and services on the internet including through Facebook and blog pages.  But whatever the reasons, what is clear is that doing online business with in Indonesia's fast growing digital community is getting more comlex. 

The government also need to address how this draft trade ministry regulation relates to another set of draft regulation from ministry of telecommunication on locating data centers in Indonesia. Law No. 11 of 2008 concerning Electronic Information and Transactions provides that electronic system operators for public are to situate their data centers in Indonesia - the implication of this is that internet firms such as Facebook and Twitter may need to situate data centers in Indonesia when the telecommunication industry implementing regulations comes into force. This is still not yet implemented because the Ministry of Communication is still deliberating on the draft implementing regulations that have been in circulation since 2013.

Foreign internet businesses are in no hurry to situate their data centers in Indonesia because of the reliability issue with local infrastructure and the uncertain legal framework.

Wednesday, July 1, 2015

Vietnam Civil Copyright Case

Image result for Mac Bao Khanh
On 12 May 2015, the Court of Hai Chau Ward in Da Nang City awarded compensation of  VND14,000,000 (approx. US$700)  in an action for infringement of copyright in a photograph. Although the case itself is relatively straightforward and the amount of compensation modest, the decision is noteworthy because copyright infringement actions of this sort rarely reach the courts in Vietnam, owing partly to the lack of detailed regulations for the assessment of infringement and damages and partly to the complex court procedures that exist. 
On 20 July 2014, a photographer,  Mr Mac Bao Khanh,  found that his work ‘Da Nang – toward future’, a photograph of Da Nang City Bridge, had been modified and was being used, without his consent, by Toan Cau Xanh Ltd. for advertising purposes. He subsequently initiated communications with Toan Cau Xanh Ltd. in an attempt to resolve the issue amicably and then, after a series of unsuccessful discussions, commenced copyright infringement proceedings in the Court of Hai Chau Ward, claiming  compensation of VND 25,000,000 (approx. US$1,146).
On 9 March 2015, the Court of Hai Chau Ward established a price assessment committee, made up of representatives of five relevant organizations, to evaluate the photograph in dispute. The committee valued the photograph at VND20,000,000 (approx. US$917).
At the trial on 12 May 2015, the Defendant argued  that: (i) the photograph in dispute had been downloaded from a tourist forum, not from Mr Khanh’s personal website; (ii) Mr Khanh had asked for a royalty of only VND200,000 (approx. US$9) per day in a deal with Vnexpress, a local newspaper, so the compensation being sought in this action was unreasonable. In its verdict issued on the same day, however, the Court found in favour of Mr Khanh and  ordered Toan Cau Xanh Ltd. to pay compensation  of VND14,000,000 (approx. US$700). Hopefully, the case will serve as an useful precedent, encouraging copyright owners to seek relief from the courts when their copyright is infringed.

Monday, June 22, 2015

Indonesia's pro and anti tobacco industry policies

Image result for indonesia cigarette industry
Indonesia's Ministry of Trade (MoT) has announced its intention to join the challenge against Australia at the World Trade Organization (WTO) over Australia's laws on plain packaging for cigarettes. Honduras, the Dominican Republic and Cuba have made challenges and 36 WTO Members have made third party interest interventions. MoT Director General of International Trade Cooperation, Bachrul Chairi asserted that mandatory plain packaging harms WTO members and would obstruct cigarette exports from Indonesia, thus affecting tobacco farmers as well as the national cigarette industry. Indonesia is a major tobacco grower and cigarette producer nation especially of clove cigarettes. Chairi framed the dispute in IP terms, stating that it could have wider negative effects on IP rights especially in other product sectors.

Indonesia's policy is conflicted.  The MoT seeks to protect the tobacco industry and IPRs. Meanwhile the Ministry of Health (MoH) enacted 2012 regulations to ban use of a wide range of words on packs from LIGHTS to PREMIUM and seems to have included a wide unspecified class of promotional or misleading terms. There are also rumours of a plain packaging bill being prepared.  This ministerial conflict is perhaps unusual, but illustrates the competing interests at work.  

Wednesday, June 17, 2015

New Domain Name arbitration in Indonesia is a win

Image result for netflix A dispute over the domain name Netflix.id in Indonesia decided in May, sets a nice clear precedent for Indonesia's new domain name arbitration procedure. Indonesian domain name registrar PANDI established an arbitration system for Indonesian country level CTLDs recently. For more on the local domain name system see here. The system known under the acronym PPND PANDI is established under Government Regulation No. 82 of 2012 on Electronic Systems and Transactions. It broadly follows the UDRP system, so offered a cost effective and efficient alternative to going to court, previously the only option.

The system operates because registrants have signed up to PANDI's terms. The procedure is that the Complainant files a complaint to PPND PANDI based on one of 3 available grounds (based on a Registered trade mark, Registered Business Name or if it is contrary to public order - which means bad faith). The time frame under the rules is 2 months, but it may take longer since there are some steps during the process with no clear time frame in the regulations - such as the time limit for the PANDI to form the Panel once the objection and the response has been submitted by both parties.

Arbitrators are appointed to hear cases from a current panel of 10. There may be a single or a panel of 3 Arbitrators depending on the procedure followed in the case. The Arbitrators are IP Practitioners, Lecturers/Academics and Officers from Ministry of Communication and Informatics.

The Netflix.co.id domain name was registered by a local registrant. The Arbitrator decided in favour of the US trademark owner on the basis of their prior registration and ordered the domain name to be transferred to Netflix, Inc.

Since then a further case over bmw.id has also been decided. Until this new arbitration system, court was the only option and so few domain name disputes had been heard. Now brand owners can feel secure that a solid arbitration system is working.