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Wednesday, April 26, 2017

Cambodia to validate European patents

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Cambodia as a small country naturally struggles to provide the infrastructure to develop a full IP system. Sensibly they take a pragmatic approach, rather than trying to design and build their own full IP system with limited resources. For example Singapore's IPOS  assists with examination.
Now they have signed an agreement with the EPO, so that European patents can be validated and then automatically apply to Cambodia. There are several steps to take, but the net result is that extending a patent to Cambodia becomes a straightforward administrative step. It reduces the cost and difficulty of examining and grant patents locally, and avoids the need to hire and train large numbers of examiners.  Cambodia simply benefits from the expertise and work already done in Munich. It becomes the first country in Asia to recognise European patents.

Other countries could learn from Cambodia; that building your own IP system should involve resource sharing with other countries. Better a small sovereignty compromise than an inadequate or poor quality system.

Thursday, April 13, 2017

Thai proposals to reduce patent pendency

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Thailand is making noises about tackling its chronic patent backlog. Tens of thousands of patents are still under examination, many times more than the 6000 or so filed each year and at least 12,000 are over 5 years old. Some applications from the 1990s are still not granted. 

The Ministry of Commerce and the National Council for Peace and Order are working on a plan to tackle the backlog. Ideas include worksharing, automatic grant for patents conforming with grants elsewhere, more limited novelty and inventiveness examinations only, expedited examination for older applications and a new reexamination system to cover for errors.

A public consultation will follow. One concern raised by the Ministry of Public Health relates to whether expediting pharmaceutical patents would lower quality including allowing more patenting of incremental inventions which could then increase drugs prices.

Tuesday, April 11, 2017

Longstanding Indonesian PRADA dispute settles

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A long trademark dispute between PT. Manggala Putra Perkasa and Prada S.A. has apparently ended in a settlement. Both parties have been in litigation since 2013. Previous details of the dispute are here.

The dispute is over the true ownership of the PRADA trademark. Both parties claimed to be the rightful owner and have rights to use the PRADA mark in Indonesia. Prada S.A. claims to be first user of PRADA in the world since 1913, with well known mark rights. PT. Manggala Putra Perkasa claims to be the rightful holder of a PRADA trade mark registration in Indonesia in class 18 and 25.

Prada S.A. had already been successful in one case to cancel PT Manggala Putra Perkasa’s registrations on the grounds of similarity in principle to their well-known trade mark. After this decision, PT. Manggala Putra Perkasa filed a civil and criminal action against the use of the PRADA mark in their shops in Jakarta.

Under the settlement both have agreed to withdraw all the ongoing lawsuits – one claim from Prada S.A. and three claims from PT. Manggala Putra Perkasa. PT. Manggala Putra Perkasa’s legal representative stated to the press that their side have been negotiating with Prada S.A. outside court. He did not divulge further details.

Sunday, April 9, 2017

Patenting costs in SEA

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An analysis of the patenting costs in SE Asia conducted by IP Watchdog leads to the conclusion that to prosecute a national phase application and maintain the pattern to end of life in the major jurisdictions in the region would cost around USD 60,000. 
With a 40% increase in patent activity in the region in the last 3 years, ASEAN seeks under the AEC to become a hub of research and innovation activity. Most advanced states comprise Singapore, Malaysia and Thailand with Vietnam, Indonesia and the Philippines in a second tier. Chemical, agricultural and medical sciences lead the way. Singapore's AStar is the biggest R&D institutional applicant and Halliburton the largest commercial applicant. 

While filing costs are relatively uniform, translation fees are a major cost with Thailand the most expensive in the region. Not only does the original specification need to be translated in many countries but prosecution reports also need translation. The fact that some countries like Vietnam and Indonesia retain variable annuity fees also makes their costs higher.

The conclusion is that the AEC needs to focus on reducing the cost of patenting in ASEAN  to encourage greater innovation and more patenting.

Thursday, April 6, 2017

Thai company takes on Alibaba

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Thailand's Elide Fire Ball Pro Company makes a fire-extinguishing ball sold in over 60 countries. It is patented by its Thai inventor and has won awards all over the world. Elide is now suing Hangzhou Alibaba Advertising Co and Jack Ma, the CEO of Alibaba personally for allegedly promoting the sale of fake goods. News reports are not clear but suggest the claim is the that fake goods infringe Elide’s patent.

Thailand’s government is driving innovation and the company sees this as a Thai IP holder fighting foreign IP violation. Thailand’s Central IP & IT Court will hear the case.  The specific allegation is that Alibaba is promoting the sale of the fake AFO fire-extinguishing balls, via its website. In addition its payment system AliExpress sells and delivers the fakes – on a global basis. They claim damages relating to safety of the fakes as well as lost sales. 

The case is interesting for several reasons. First according to news reports it is a patent case, and if so patent contributory liability should lay out some different issues from secondary liability for trademark and copyright infringing sales on the Internet. Secondly a Thai company suing a Chinese intermediary makes for some interesting dynamics.  The last reason that they are suing Jack Ma for personal liability makes for good headlines, but surely he had nothing to do with the acts personally.

Tuesday, March 28, 2017

ASEAN IP Action plan

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ASEAN’s long awaited IPR action plan 2016-25 is now in operation. It is an ambitious plan with a long timeframe. It contains many projects under its 19 Initiatives. Most have champion countries to drive them forwards.  Many relate to improvement of IP services delivery (especially through capacity building and better IT adoption), some cover harmonization of registration systems, some are about joining more international IP treaties and yet more cover greater regional IP cooperation.

There are a number of projects to develop innovation through patent infrastructure support to researchers and universities, such as improved IP office and national science & technology R&D Institutes, and University cooperation. Hopefully this will help local patent filings grow from ASEAN member states. More could perhaps be done to support private sector patenting.

Initiative 12, a Regional Action Plan on IPR Enforcement is of interest. This includes capturing data on enforcement cases, best practises and national guidelines for criminal and civil cases, improved linkages between national IP offices and the judiciary in members. This is the first time the regional group has begun to focus on enforcement.  Much of the IP enforcement weaknesses are a subset of general legal system weaknesses, so lets see how this initiative comes together.

Saturday, March 18, 2017

Social media advertising in Vietnam

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In countries without fully operating democracies, the conflict between freedom of speech and IP rights sometimes comes to the fore. 
In Vietnam, Decree 72 on social media bans information that it deems anti-government, damaging to national security or which destroys national unity.  A battle has been brewing for some time due to fast growing social media use. In Vietnam citizens are wary of criticizing the government but the first social media protest did erupt 2 years ago over protection of trees in the capital Hanoi. Two years on, after the decree, what would be considered illegal content is becoming more widespread.
So the government is seeking to prohibit businesses from supporting these sites through their advertising. They are specifically targeting YouTube, Facebook and other social media whom they say publish "toxic" anti-government information. First state-owned dairy Vinamilk and Vietnam Airlines withdrew adverts. Then the information and communication minister spoke with a number of foreign companies including the Unilever, Ford and Yamaha to request them to halt YouTube advertising. He alleged there are over 8,000 anti-government videos on YouTube, of which only 42 had been partially blocked by the site owner Google.
Computerized ad placement systems target ads to specific audiences so advertisers rarely know or control what content is shown with their ads. Google says it does review blocking requests from governments carefully. Industry groups like the Asia Internet Coalition have started that the open nature of the internet is where its value lies. Vietnam, without the vast resources China has, has been unable to build a firewall, to block content it doesn't like. Finally now social media's free speech basis is running into conflict with a government that seeks to control how its citizens and others convey their thoughts about the country and its government.

Thursday, February 23, 2017

Cambodian government logo disputes

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Cambodia’s government is wading into trademark disputes. Two finance institutions Acleda Bank and Prasac Microfinance have been asked to change their logos to differentiate them from state institutions. Prime Minister Hun Sen himself has threatened Prasec, the largest microfinance institution in the country. He indicated the central bank required it and threatened to withdraw their trade licences if they failed to comply.
Image result for Acleda Bank logoThe logic is that the logos are too similar the Ministry of Economy and Finance’s logos and “If people start believing that these institutions belong to the government, then they think they don’t need to pay back their debts, which is very detrimental to the industry,” has said Chea Serey, the director-general of the National Bank of Cambodia. Some have questioned why this is such a big issue, suggesting it is a way to emphasize borrower obligations obliquely. Both institutions face a multimillion USD bill for the change which impacts signage at hundreds of branches and replacing bank cards and documents, apart from the advertising and marketing costs of the rebrands.  

Monday, February 13, 2017

New online platform rules in Indonesia

Image result for online shoppingMassive ecommerce growth in Indonesia has been accompanied by a rise in online infringements. There is a site blocking system in place but this requires the IP Office to issue a formal request to the Ministry of Communication and Informatics so is impractical. Now this Ministry has issued a new Circular Letter requiring online platform operators to take responsibility for their own platforms.
The letter is titled Limitations and Responsibilities of Platform Providers and Merchants Who Engage in Electronic Commerce While Utilizing User-Generated-Content Platforms. It outlines a wide variety of prohibited content and illegal products which may not be put or traded on online platforms.

It sets out obligations and responsibilities for the platform operators.  They must use online service terms, operate complaint procedures, there are reporting requirements and they must take down illegal material (within 14 days for IP violations). There are overriding obligations to manage and monitor their platforms professionally and responsibility.

Merchants are required to provide information, observe online service terms and are prohibited from uploading banned content and products.

Many platforms are already operating with terms of service that do much of this but the time frames vary; this now provides legal teeth for online enforcement and should help IP holders taking action.

Wednesday, February 8, 2017

U.S. Chamber International IP Index - the SE Asian economies

The US produces a number of reports on IP each year. The U.S. Chamber International IP Index here focuses on how IP facilitates innovative and creative economies. 45 countries' policies are studied to see which have the strongest IP ecosystem, from the perspective of creating economic growth. Areas studied included patenting, trade secrets and market access, counterfeiting and piracy, IP law development and IP cooperation.  IP Komodo hunted out the major SE Asian economies to see what was said.

The Philippines, scored highly in the SEA region at 34/45 countries. Not only does it have the basic systems in place there is a culture of improvement in IP enforcement and interagency and international cooperation. Non deterrent IP penalties, mixed enforcement results, gaps in life sciences and content-related IP protection, rampant digital piracy and some trademark system weaknesses still exist however.

Indonesia ranks at 39/45 countries and is one of the few economies falling from previous years reports. Trademark protection is regarded as a strength (although subject to difficulties protecting well known marks); however the patent system weaknesses, copyright piracy and weak international IP cooperation are cited as problems which contributed to the low score.

Vietnam, at 37/45 and trending upwards, has a basic IP framework in place but problems with the usability of its enforcement system, weak copyright protection and gaps in life sciences IP protection.

Thailand ranks at 40/45th, but trending upwards. While many elements are in place to protect IP, patent backlogs and gaps in the law, life sciences IP protection, an incomplete digital IP framework, and high counterfeiting and piracy rates, with low deterrent sentences are seen as the main problem areas.

These reports can often be hard to read accurately, but there is a lot of detail in the report, so at least some level of quality research is behind it. The precise rankings are perhaps arguable, but the general problems facing IP holders in SE Asia are probably fairly accurate.

Monday, January 30, 2017

New online IP site blocking rules in Thailand

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Part of new amendments to the Thai Computer Crime Act passed by the National Assembly in December 2016 aim to reduce online IP infringement. The relevant IP provisions empower the government to go to Intellectual Property and International Trade Court (IP Court) to seek an order to block sites that infringe others' IP. Once the site blocking order is granted, the government, through officers appointed by the Minister of Digital Economy and Society can then arrange to block the site by technical means or by requiring ISPs to do so.  These new rules take effect in May 2017.


Thursday, January 26, 2017

Damages for trademark infringement in Indonesia

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A recent trademark infringement case helps interpret damages further.  The Plaintiff owns V-GEN and V-GEN MEMORY trade mark registrations in Indonesia in class 9 for memory cards. In 2012, the Plaintiff found counterfeit memory cards sold by shops owned by the Defendant.  A criminal action was filed and the Jakarta district criminal court declared the Defendant guilty and sentenced him to 10 months imprisonment. This Jakarta High Court on appeal increased the sentence to 11 months, which was confirmed by the Supreme Court.

The Plaintiff filed a civil case claiming the counterfeiting  caused considerable damage to his business, claiming IDR 16,340,000,000 damages (over USD1 million) due to profit falls, promotion expenses and intangible damages. The Central Jakarta Commercial Court granted parts of the Plaintiff's claims. The Judges declared the marks well known and infringed and then ordered the Defendant to pay IDR (USD140,000) to the Plaintiff. The amount was the promotional expenses of the Plaintiff in magazines, at IDR 200,000,000 per month x 10 months. The Judges denied the rest of the Plaintiff claims.

The Plaintiff appealed the smaller damages award but the Supreme Court refused his appeal.  In fact this was a decent sized damages award based on evidence. This is typically the only way to recover damages - speculative or unsubstantiated claims usually don't work.  It is perhaps odd that the claim was not based on losses or profits - as it was in the Hitachi trade secrets case - see here.