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Thursday, January 12, 2017

Cambodia joins Hague

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The Government of the Kingdom of Cambodia deposited its instrument of Accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs late in 2016. The 1999 Act will enter into force on 25 February 2017. Designs are an increasingly useful tool for local companies operating in SE Asia. It is a general pattern that emerging economies struggle to develop robust patents. However designs are an easier level of IP protection to obtain and so are more commonly used to protect products by local companies. In addition SE Asia's creative and aesthetic skills make for lots of unique and interesting local designs for products. Until now few sought design protection, perhaps beyond their local market due to cost. Having ASEAN members join Hague is a core IP goal for the region. A boom in design filings can be expected as more countries join in this region.


Monday, January 9, 2017

Patent growth in Indonesia

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WIPO's 2015 data report on World Patent Indicators shows an interesting trend for Indonesia.

Patent filings in the country jumped by over 14% in 2015 over the previous year, the second largest % rise worldwide after China. This is well over its 7.8% long term growth trend. 9,153 patent applications were made in total. 1,058 of them (nearly 12%) were by Indonesian residents. However two thirds of the growth came from foreign applications. Principally this is from Japan which filed over a quarter of all applications in Indonesia.

By comparison total patent filings in other SE Asian markets were as follows:

Malaysia 7,727
Vietnam 5,033
Philippines 3,734
Thailand 7,930

This will be good for government revenue and surely reflects increasing foreign investment.

Grant rates however remain low at 1911 in 2015, suggesting an increasing backlog. The grant to application ratio of Indonesia is lower than other countries in the region - Thailand, Philippines and Malaysia are showing far higher grant levels. This needs to be addressed to avoid longer delays. The new patent law might help.  

But whilst domestic Indonesian applications rose by 4%, only 6 PCTs were filed by Indonesians, demonstrating how little international technology focus the country has. Compared with 17 PCTs from Philippines, 97 from Thailand and 15 from Vietnam. Indeed, one worries that some of the local inventor applications might not withstand foreign examination.

Saturday, December 24, 2016

Indonesian lawyers fight it out for their own brand

When lawyers get into legal disputes with each other, it tends to get messy. Indonesia has in the past struggled to maintain a single bar association for lawyers. In recent years, the Perkumpulan Advokat Indonesia / Indonesia Lawyers Association has been the only one.

However more recently the Persatuan Advokat Indonesia / Indonesia Lawyers Union appeared as an offshoot if the Association. They were both using the same logo along with a near identical name. The Association founded on 20 August 1964, filed trademarks for PERADIN under the name of Persatuan Advokat Indonesia in 2010 in classes 45, 41, 38 and 16. The Union was an offshoot following an internal dispute.

The Association sued the Union claiming infringement as the Union offered services as a professional organization and ran seminars. The Association also claimed that the Union used the PERADIN mark on signs, letterheads, as well as on public announcements. The Association sought IDR 5 billion as intangible damages and a public apology.

The Union filed a motion to dismiss the Association's claim. They argued that the Association had no legal standing to file the claim using spurious arguments over legitimacy. The Union set out the history, that whilst the Association was the oldest Indonesian lawyers’ organization since 30 August 1964 under the name of ‘Persatuan Advokat Indonesia’ (PERADIN), in 2010, there was an internal conflict within the organization which caused them to split into two camps, one camp (the Association) which led by Frans Hendra Winarta, who registered the original name of the organization.
The other camp (the Union), led by Ropaun Rambe, used the name ‘Perhimpunan Advokat Indonesia’ (PERADIN). Ropaun Rambe had registered a Copyright for the PERADIN logo No. 048131 on 2 August 2010 so claimed that they rightfully used the PERADIN logo for their activities. The Union filed a counterclaim too, claiming that the Association’s action to register the name PERADIN as a trade mark is incorrect because as a professional association, the organization does not use the trade mark registration to actually trades in the services.  The Union requested the Court to declare that it was the legal body rightfully using and holding through its Copyright recordal the name PERADIN. The Union sought to cancel the Association’s PERADIN trade mark registrations because it infringed the Union’s Copyrighted Work.

Of course the Central Jakarta Commercial Court rejected the Union's motion to dismiss and their counterclaim. The Panel of Judges accepted some parts of the Association's claim by declaring that the Union had infringed the Association's PERADIN trade mark. The Panel ordered the Union to cease any activity that uses the PERADIN trade mark and to destroy any goods that use the logo. The Panel also ordered the Union to pay IDR 1 million per day as a penalty if it did not comply with the decision.

The Union filed an appeal with the Supreme Court but this was rejected too. They rightly told the Union that they should have chosen a different brand.

The interesting point is over the conflict of laws between trademarks and copyright. Indonesian infringers often register and cite copyrights in defence to justify use of similar marks. The clear point now is that copyrights cannot override trademark rights.

Thursday, December 15, 2016

Patent annuities in Indonesia

At last with the new patent law there is clarity on the annuities issue. See here for the previous problem. A new Patent Office Circular covers annuities under the new Patent law enacted in August 2016. There are three situations:

Firstly the old law applies to patents filed before the new Patent Law came into force on 26th August 2016. There is no clarity in whether the government will continue to demand payments as they did in the past, but presumably not. 

Article 126 of the New Law applies to patent annuities due after that date.

There is a transition period for annuities due from 26 August 2016 until 30 December 2016. Patentees may pay these in 2016 along with 2017 annuities. Failure to pay these under Article 134(1) will lead to the patent being deemed abandoned. 

Patent holders will need to pay specific attention to annuities due since August.



Monday, December 12, 2016

Vietnam taxes trademark licenses

Image result for taxA controversial tax issue on IP has arisen in Vietnam. Trademark licensees traditionally do not pay VAT on the licensee fees because this is seen as part of technology transfer, a way to attract investment. However several triggers have led to a change. Vietnam is looking at its IP system in light of the TPP and EU trade deals. Previously VAT was not charged and the position somewhat unclear. A number of companies had ongoing discussions or investigations with the tax authorities.

Now the Ministry of Finance has issued a letter to make it clear that VAT applies on trademark license fees. The logic is that assignment of a mark is a sale so does not attract VAT, but licensing is an income based transaction, so Vietnam will charge VAT. And trademarks are not necessarily technology so are not exempt.  

There is resistance from business. However ultimately the cost is likely to fall on domestic licensees and passed on to Vietnamese consumers.

Accountants are advising companies to review their contracts because the issue could be retroactive. If all taxes were declared by the deadline of November 7th, then prior license fees are not affected, even if tax was not paid. But if taxes were not filed and paid at that date the letter now applies and could apply to all undeclared license fees.

Wednesday, December 7, 2016

New Indonesian Trademark law takes effect

Indonesia's new Trademarks Law came into effect on 25 November 2016 as Law No. 20 of 2016.  See here for details. On 7th December 2016, the TMO started accepting applications based on the new law. In the intervening period applications have been filed, but these will fall under the new law.

Tuesday, November 22, 2016

Vietnam company creates unique new copyright system

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The Blockchain has long been talked up as a source of useful risk reduction in transactions. Bitcoin and other systems rely on its distributed database structure to ensure facts can be verified and so risks reduced. An example is escrow systems for online ordering so that payment is triggered upon delivery.   

Copyright is an area where proof of subsistence and ownership would be very suitable for a Blockchain based verification system.
Now a Vietnam based software developer Copyrobo has developed a web- and app-based system for authors to create timestamped evidence of their work quickly and accurately. Using the Blockchain and timestamps it helps creators timestamp and manage copyrights.
Their angle appears to be that it can be used quickly and efficiently for online enforcement by allowing integration with social media.


Tuesday, November 1, 2016

Indonesia's new trademark amendments - a summary

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The new Trade Mark and Geographical Indication Law was passed by Parliament on 27 October 2016 and is expected to come into effect by 27 November 2016 depending when the President signs. The main changes are :
  • Non-traditional Marks can be filed – e.g. 3D, sound and hologram marks 
  • Madrid Protocol applications can be filed (after Implementing Regulations) 
  • New absolute grounds for rejection for marks which are misleading or deceptive. Generic marks must contain additional material to be registered
  • Electronic filing of applications
  • Publication will now be before examination (reversing the current process) 
  • The opposition period is shortened from 3 months to 2 months
  • Substantive examination will speed up under shortened timeframes
  • Registration - In theory, registration will now take 9 months, compared to the previous 14 month timeline. But in practice it presently takes 3 years!
  • Late renewals are now possible in some cases
  • Recordal of Assignment/Change of details can now be filed against pending applications. Recordal of licenses is only possible against registered marks.
  • Post registration amendments to certificates are now possible, after Implementing Regulations.
  • Revocation / Deletion of marks can now also be for conflict with a prior GI or Traditional Knowledge element.  
  • There are additional rules on trademark litigation in the commercial court.
  • The IPO's PPNS investigation officers' powers are clarified 
  • Criminal penalties for trade mark infringement have been doubled and further increased for safety related products
  • The new law removes the term “deliberately” from trademark crimes
All pending applications filed before the law follow the 2001 law. All implementing regulations shall be passed within 2 years the law says.  

Monday, October 31, 2016

Philippines IP Strategic Plan

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The Philippines IPO is often praised as a great example of how a South East Asian government can take initiative and charge of implementing IP improvements in its country.  The Philippines IPO have through their efforts had the county removed from the USTR Priority Watch list in recent years. This came about through initiatives such as the National Centre for IPR Enforcement, which helps coordinate IP enforcement , the responsibility for which sits among many government departments. 
A week ago at the sixth Philippine Anti-Counterfeiting and Piracy Summit, deputy director-general Allan Gepty announced their second IPR Action Plan for 2017-2022. This 5 year agenda aims to address several matters. This includes legislative changes such as secondary trademark liability for landlords and internet intermediaries. The IPO has already made an initiative to target intermediaries through other support in laws but now seeks direct clear liability. They will also introduce online industrial design filing and new payment options for applicants. This follows the online filing systems for trademarks which already operates.

Thursday, October 27, 2016

Indonesia amends Trademarks law

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In the last of the IP law amendments in this round, Indonesia has passed its new Trademarks Law this week. The Copyright Law was amended in September 2014 and Patents and Designs earlier in 2016. 

The Trademarks law had many proposed amendments over the year causing a 6 month delay - for example after the June fake vaccines scare increased penalties for safety related product fakes. It is also intended to enable the Madrid system to be implemented (an ASEAN requirement). Geographic Indications are also included.  A more detailed analysis of the changes will follow.  

Wednesday, October 26, 2016

SEA Illicit trade report

The Economist Intelligence Unit has released its report on illicit trade in Asia. It defines illicit trade to cover many illegal acts including counterfeiting.  Illicit trade is enabled by varying combinations of corruption, incompetence and indifference. The difficulty collecting hard data makes it hard to quantify. But overall they conclude that the counterfeit and mis-declared goods along with other illicit trade is rising. Along with the European Chamber of Commerce in Singapore, the Economist Intelligence Unit has created the Illicit Trade Environment Index, which measures 17 economies in the Asia Pacific region on the extent to which they enable illicit trade.

The factors that lead to this trade's growth are plain to see. Acceptance of low level economic crimes and weak enforcement of laws are clear reasons. China is a large part of the problem but it is improving. Developed markets often score well due to their stronger legal environments. But Singapore scores badly due to its laissez fair attitude to transhipment, worth billions - implying that Singapore earns a great deal of money transhipping illicit goods. Emerging markets with weak legal environments are havens for illicit trade naturally. This applies especially to Cambodia, Laos and Myanmar but Indonesia, Philippines and Vietnam are only slightly above the bottom 3. Only 9 of 17 countries studied have proper Customs recordal system in place for IP - 20 years after the WTO TRIPS agreement too effect for most countries!



Saturday, October 15, 2016

Pharma regulatory improvements in Indonesia

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Indonesia has amended its pharmaceutical registration requirements. The National Food and Drug Supervisory Agency (BPOM) issued Regulation No. 17 of 2016 (Amendment) amending its 2011 regulation Criteria and Procedures for Drug Registration (Regulation) in August 2016.

The Amendment seeks to simplify drugs registration procedures. All drugs must be registered to obtain a drug distribution permit. There are 3 registration categories:
1. New registrations (that is all new drugs and biotherapeutic products, including biosimilars, generic drugs and other pharmaceutical products)
2. Variant registrations (such as reformulations and new compounds); and
3. Re-registrations and extensions.

The Amendment focuses on major variants where there is no need for further quality and efficacy testing. This applies to new formulations for example. In those cases, the the pre-registration processes to examine the various necessary factors for a new drug registration are no longer required, in essence because the drug is a mere reformulation of an existing one, that has been through those procedures.

Processing times for BPOM to register various categories of drugs have also been accelerated.  This applies to categories such as major variants like reformulations,  re-registrations, along with drugs for serious and life threatening illnesses and orphan drugs.

The intention is to improve speed to market of important pharmaceutical products in Indonesia by removing unnecessary procedural barriers.  

Meanwhile Indonesia's Parliament is debating a far more comprehensive
Draft Bill on Drugs and Foods Supervision which is intended to improve the quality, safety and efficacy of drugs and foods across the country. It proposes to do this by bringing the current patchwork of rules under one law. More rigourous distribution rules are driven by the recent fake vaccines scandal (see here).

Monday, October 3, 2016

Myanmar counterfeiting case

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U Tint Naing Vs. Daw Kyu Kyu San & others is a rare example of a criminal counterfeiting case from 2015 in the Yangon courts. It began when the Myanmar distributor on Korean company Nature Republic Co. Ltd Korea took action against 4 shop owners in Yuzana Plaza, Yangon claiming they were selling counterfeit cosmetics.  The police then further arrested a wholesaler and discovered the fake goods were imported. The 4 retailers cooperated and the wholesaler paid compensation. Public apologies were published in local newspapers and the Court eventually discharged the defendants.  

Most fakes in Myanmar come overland from China. As yet no trademark law exists, but it is possible to enforce other rights.