Thursday, 28 November 2013 03:03
The Myanmar government is aiming to introduce new intellectual property laws by early next year.
Currently, trademark applications are filed in the form of a Declaration of Ownership of Trademark “DOT”, with the Deeds Registration Office. Each trademark must be filed using one DOT for each mark. The Applicants are also required to execute a notarised and legalised Power of Attorney (PoA) in favour of a local agent. It is important that the POA and DOT must be signed by one and the same person. After submission of the DOT and PoA, the trademark application will be registered.
Further, it is customary to publish a “Cautionary Notice” in a Myanmar newspaper, advertising the mark holder’s ownership.
It is important to note that at the time of application for registration, all documents must have a validity of three (3) months from the date of execution in their country of origin.
The business world waits in anticipation for the new law, which as the buzz goes would strike a balance between the needs of Myanmar as a developing nation and measures to ensure that the intellectual property is well protected. In this shifting legal landscape, while waiting for the new law to be finalized, intellectual property owners hoping to establish a foothold in the lucrative Myanmar market need to act now.
Clients are advised to register their rights under the existing law to secure first mover advantage, in the event that such registration is given priority under the new laws
Published in Myanmar
Thursday, 28 November 2013 02:32
PT Perusahaan Gas Negara (Persero) Tbk (PGN) (the Defendant), is an Indonesian company involved in the business of transmission and distribution of natural gas. In 2012, an action for infringement was filed by M Rimba Aritonang (the Plaintiff) in respect of Design No. ID0009708 entitled “Meter Box Adaptor” and was assigned Case No. 73/D.I/2012/PN.Niaga.Jkt.Pst.
Industrial Design No. ID0009708
On August 12, 2005, M Rimba Aritonang filed a design application with the Directorate General of Intellectual Property (DGIP) under Application No. A00200503388 and Locarno Classification 23-01 claiming the shape, configuration and composition of lines as shown in the representations below. This design protects natural gas pipe joints from catching fire from flames or through the sun. The industrial design was granted by DGIP on August 28, 2008, under Design No. ID0009708 and is reproduced below as Figure 1.
On November 14, 2012, the Plaintiff registered his suit with the clerk of the Commercial Court at the Central Jakarta District Court. The Plaintiff is a retired employee of the Defendant and claimed that the Defendant had used his design and manufactured products using the said design since 2006, without his permission, as the holder of the Certificate of the Right to an Industrial Design. Consequently, the Plaintiff asked the Defendant to pay compensation for damages in the amount of Rp132.39 billion (US$11.8 million).
The Defendant argued that the Plaintiff designed the pipeline protection connection when he was working with the Defendant, hence, for all intents and purposes, the design registration belonged to the Defendant. The records show that the Plaintiff worked with the Defendant from 1967 to 1997 and that the disputed design was conceived in 1990 when the Plaintiff was still under the employ of the Defendant. Additional defenses were raised on the basis that the design registration should not have been granted by the DGIP as it has absolutely no uniqueness or distinctiveness over prior disclosures, thus lacking novelty.
The Plaintiff’s lawyer confirmed that his client had worked with the Defendant. However, he argued that his client had designed a different and novel adaptor which qualified for design registration. He also explained that before his client got exclusive rights, DGIP had published the registration. During the specified period, the Defendant had never filed an opposition.
After due consideration of the arguments and evidence submitted by the parties, the Commercial Court of Central Jakarta rendered judgment on April 4, 2013, in favour of the Plaintiff and concluded that the Defendant indeed infringed the industrial design. The judges decided that the Defendant pay Rp180 million (US$16,100) as compensation.
This case illustrates the importance of protecting intellectual property rights at the onset. The issue of ownership could have been avoided had the Defendant registered the original design when it was conceived. Indonesia adopts the first to file system. Accordingly, it is open to third parties to copy a concept and file the application before the owner, thus depriving the actual owner of its proprietary rights.
Thursday, 31 October 2013 06:39
The recent case of Pfizer Ireland Pharmaceuticals (“appellants”) and Ranbaxy (Malaysia) Sdn Bhd (“respondents”) springs out of an invalidation action initiated by the respondents to cancel Malaysia Patent No. MY-111446-A entitled “Pyrazolopyrimidinones for the Treatment of Impotence” (the “446 patent”). The appellants raised the issue as to whether the court had the power to amend a patent post grant and while the subject of an invalidation proceeding under Section 56(3) of the Patents Act 1983 (“the Act”). In so doing, the court had to draw a clear line on the interpretation of Section 79A of the Act and Order 20 Rule 8 of the Rules of the High Court (“RHC”).
Section 79A of the Act states that a patent document cannot be amended after grant unless there has been a typographical error, or such amendment is supported by the specifications and does not go beyond the initial disclosure of the said patent. Section 79A (3) further states that the registrar shall not amend a patent if there is a pending court action on the invalidity of the said patent.
On the other hand, Order 20 Rule 8 of the RHC gives the court the power to amend the pleadings including ‘other documents.’ Hence, the appellants argued that “other documents” includes the patent document which is the subject of the present case. Note that the Act is silent on whether the court has the power to amend the patent during an invalidation proceeding.
Prior to the decision of the Federal Court, the issue was first raised in the High Court where the respondents had brought an action for Invalidation against the appellants’446 patent. The main action is based on the fact that the corresponding European Patent No. EP 0702555 B2 (“EP 555”) of which the present 446 patent was conformed had been rejected by the Technical Board of Appeal of the European Patent Office.
The appellants in order to avoid invalidation of their 446 patent commenced a separate application in the High Court to amend their 446 patent by reducing the 13 claims of that patent which were in conformity with the rejected EP 555 patent to an amended single claim by invoking Order 20 Rule 8 of the RHC.
The High Court decided that if such an amendment was allowed, it would deprive the respondents of their right and opportunity to seek redress in its invalidation claim of the appellants 446 patent. Further, the amendment to 446 patent would change the character of the suit and cause injustice to the respondents.
Aggrieved, the appellants elevated the suit to the Court of Appeal which decided in favour of the respondents stating that the courts have to balance between whether by granting leave to amend the 446 patent the other party would suffer injustice. In the present case, it was affirmed that if the court were to allow the appellants to amend their 446 patent, the respondents would suffer injustice that would not be compensated by cost as their statement of claims and particulars of objection would have to be altered drastically.
The Federal Court agreed with the lower courts and held that the RHC does not permit amendment of documents which are introduced as evidence in a suit. Secondly, the express words of Section 56 of the Act give the court the authority to invalidate a patent but does not permit or empower the court to amend patent documents. Thirdly, the court’s inherent powers are limited to procedural and exclude alteration of substantive matters.
The foregoing decision harmonizes what seems to be a conflict between Section 79A of the Act and Article 20 Rule 8 of the RHC. Patents subject of an invalidation proceeding are evidence and as such may not be amended by the courts post grant on the guise that said patent documents form part of “other documents.”
Published in Malaysia
Wednesday, 30 October 2013 08:02
The Intellectual Property Office of Singapore (IPOS) has recently changed its practice with respect to marks which are “treated as withdrawn” or “abandoned”.
Earlier, the Registry practice included citing marks which were reflected on the Register as “Treated as Withdrawn”. Therefore, deemed withdrawn applications were also cited against other pending marks. With respect to abandoned marks, the practice was to cite those applications where the abandonment had occurred before one month at the time of examination, with a view to allow possible restoration of the abandoned application.
With effect from 15 July 2013, IPOS has revised its practice and the Registrar will no longer cite conflicting marks where the status of such marks is “Treated as Withdrawn”, “Abandoned” or “Cancelled.”
A mark that is “Treated as Withdrawn” and in respect of which a reinstatement application is filed, will still be subject to a search for conflicting marks and with the change in practice, trademark applications filed after the date o
f withdrawal and before the reinstatement date of the “Treated as Withdrawn” mark can now be cited against the “Treated as Withdrawn” mark prior to its reinstatement.
The Registrar has further emphasized that filing of the requisite forms does not automatically guarantee the reinstatement of the mark whose status is “Treated as Withdrawn” given that the treated as withdrawn mark will still be subject to a search
for conflicting marks filed prior to reinstatement.
In consideration of the aforementioned change in practice, the Registry has now replaced the practice set out in the Trade Marks Work Manual. The amended practice in the online Manual now reads as:
"The Registrar will not cite a conflicting mark that is reflected as "Treated as Withdrawn", "Abandoned" or "Cancelled" on the Register, against a later application. The applicant of the "Treated as Withdrawn" mark, should expeditiously request for the Registrar's consideration to reinstate his mark by lodging Form TM 40 and the requisite fee, if intended."1
This change in practice will affect Applicants whose mark status is “Treated as Withdrawn” because the Applicant whose mark status is “Treated as Withdrawn” will now have to ensure that the mark is restored as soon as possible to avoid a conflict with a later application.
 Tm Registry Circular No. 6/2013
Tuesday, 10 September 2013 08:16
On 10 July 2012, Singapore Parliament passed the Patent (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill geared towards strengthening and enhancing Singapore’s patent system in order to support Singapore’s growing international patent capabilities, and developing Singapore as a global Intellectual Property (IP) hub in Asia.
The amendments are intended to a) change the current “self-assessment” patent system to a new and enhanced “positive grant” patent system; b) liberalise the patent agent sector; and c) streamline and harmonise the IT system and procedures of the different Registries at the Intellectual Property Office of Singapore (IPOS).
“SELF-ASSESSMENT SYSTEM” TO “POSITIVE GRANT” PATENT SYSTEM
The “self-assessment” patent system was a practical approach recommended by WIPO when Singapore first started its own patent system in 1995 to encourage applicants to register their patents in Singapore. To date, there are more than 75,581 Singapore patents granted by IPOS.
Under the “self-assessment” system, when filing a patent application at IPOS for grant of a patent in Singapore, an applicant is required to decide on the route of examination that he wishes to rely on to satisfy the search and examination requirements prior to grant. Unlike other jurisdictions, there are several search and examination options available depending on the needs of the applicant. For example, an applicant can i) rely on the established International Preliminary Report on Patentability (IPRP), or ii) rely on a prescribed corresponding granted patent, or iii) request for local examination based on established search report, or iv) request local search and examination. Based on the above established search and examination reports or the prescribed corresponding granted patent, an applicant can proceed to request for the grant by paying the required fees. IPOS will subsequently issue the patent once it is satisfied that the formal requirements have been met and the application is in good order.
Under the new “positive grant” patent system, the decision to grant a patent now rests in the hands of the Registrar and only patents which have been searched, examined and fully satisfy all three patentability requirements will be allowed to proceed to grant. Under the new section 29A of the Singapore Patents Act (“the Act”), the Registrar will issue the Notice of Eligibility informing applicants that their patent application may proceed to grant only if the examination report does not contain unresolved objections on patentability.
If the Registrar believes that the examination report contains one or more unresolved objections, a Notice of Intention to Refuse the application will be issued to the applicant. Under the new section 29B of the Act, the applicant may apply for review of the examination report. The applicant may also use the opportunity to provide written submissions and/or to amend the patent specification to overcome any unresolved objections. Thereafter, the Examiner will issue an examination review report based on the prior examination report and the applicant’s written submission and/or amendments. Upon receipt of the examination review report, the Registrar will either issue a Notice of Eligibility to proceed to the grant of a patent or, if the objections remain, a Notice of Refusal to grant a patent.
In view of the above amendments to the Act, IPOS has released the draft amendments to the Singapore Patents Rules. IPOS intends to implement these amendments this year. Amendments to the Rules include:
Furthermore, it is proposed that some prosecution deadlines and time limits for extensions will be amended as follows:
The shift to the “positive grant” patent system is a significant move forward for Singapore and has received strong support from both IP practitioners and those from relevant industries. The shift will more closely align the Singapore patent system with other established patent offices like the European Patent Office, Japan Patent Office, UK Intellectual Property Office and the United States Patent and Trademark Office. The new patent system will also minimise weak patents and raise the overall quality of patents granted in Singapore. This will strengthen business and investor confidence in the quality of the patent system and the patents granted, as well as encourage greater innovation within Singapore.
LIBERALISATION OF PATENT AGENT REGIME
The amendments to the Act also allow for foreign-qualified patent agents to be registered at IPOS on the basis of their foreign qualifications and to undertake offshore patent agency work in Singapore. However, the scope of work that the registered foreign patent agents can undertake will be limited to applying for and obtaining patents at foreign patent offices other than IPOS; preparing patent specifications for filing patent applications, including PCT international patent applications, outside of Singapore and providing advice on other countries’ patent laws. This change will enable more international patent firms to set up practices in Singapore and will provide Singapore with greater access to international patent expertise to meet the growing demand in the region for professional patent services of international quality.
INTEGRATED REGISTRIES IT SYSTEM
The relevant sections of the Patents Act, Plant Varieties Protection Act, Registered Designs Act and Trade Marks Act have also been amended to support the streamlining and harmonisation of the IT system and processes of the various Registries at IPOS. A new integrated Registries IT system will be introduced. Common forms will be used across the Registries, e.g. the form to request the change of name and address of agent, applicant, proprietor or other interested person. Such amendments will create greater consistency, and improve efficiency and cost-effectiveness when dealing with the different Registries. The new integrated Registries IT system will make it easier and more convenient for customers to perform transactions and access information related to the different types of IP online via IPOS’s IP portal.
CONTENTIOUS PROCEEDINGS BEFORE THE REGISTRAR
The draft amendments to the Patent Rules also seek to align the process for patent hearings with those of other types of IP, as well as providing clarity and streamlining certain procedures in contentious patent proceedings.
Tuesday, 10 September 2013 08:16
Of all human rights, privacy can be one of the most difficult to balance. This is exacerbated by the Internet where free, easy and voluntary dissemination of information is routine both in the business and privately. The use of this rapidly developing technology continues to raise doubts regarding security of information and legal certainty. Data privacy is something that is very important as there are civil and criminal risks.
Indonesian data privacy protection is spread over several pieces of legislation such as the Human Rights Law, ITE Law, Code of Criminal Procedure and others, as we explain below.
Indonesia’s constitution does not explicitly regulate data protection or privacy, although it does state unequivocally the protection of human rights. In the 1945 Constitution, the provisions on data protection are in sections 28F and 28G (I) -the freedom to store information and protection of data and information attached to it.
Article 32 of Law No. 39 of 1999 concerning human rights provides that freedom and secrecy of communications by letter or any other electronic media shall not be disturbed or interrupted except upon the instruction of a judge or other lawful authority.
Article 26 (1) of Law No. 11 of 2008 on Information and Electronic Transactions contains a very brief section stating the right to enjoy personal life and be free from any invasion. Any person whose rights are infringed may lodge a claim for damages incurred. The ITE Law further prohibits anyone with intent and without valid rights from changing, adding, reducing, transmitting, destroying, eliminating, transferring or hiding electronic information and/or electronic documents owned by another person or by the public.
Article 47 of Law No. 8 of 1981 regarding Criminal Procedures gives the police permission (subject to keeping the contents of such confidential) to open private mail sent via post and telecommunications offices, if they obtain a special permit of the head of the district court.
Article 57 of Law No. 36 of 2009 regarding Health states that everyone is entitled to the confidentiality of their personal health information provided to or collected by health care providers.
Ministerial Decree from the Ministry of Communication and Information No. 01/per/m.kominfo/01/2009 prohibits the sending of broadcast SMS’s that are contrary to the public interest, morality, security or public order. Violation attracts administrative and/or criminal penalities.
In view of these fragmented regulations, the government is currently discussing with the relevant concerned parties consolidating to a single codified law of data privacy.
Monday, 20 May 2013 06:42
As patent filings worldwide increase, there is a need to provide an alternative route to expedite the examination of these applications. The Patent Prosecution Highway is becoming an increasingly popular way to fast-track patent examination among countries in the region, including Singapore and the Philippines. Gladys Mirandah and Jay-R Estavillo report from Singapore.
The Patent Prosecution Highway (PPH) has been continuously gaining popularity worldwide as an alternative route to expedite the examination of patent applications. PPH is a mutual agreement between two offices allowing applicants to request a fast-track examination by using the examination conducted by the other office or vice versa. Since the commencement of the PPH pilot program between the Japan Patent Office (JPO) and the United States Patent & Trademark Office (USPTO) in July 2006, there are now 27 offices participating in the PPH. Two of them are ASEAN members, namely: Singapore and the Philippines.
History of the PPH in ASEAN
In ASEAN, Singapore was the first to take advantage of the PPH when the Intellectual Property Office of Singapore (IPOS) launched the PPH pilot program with the USPTO on February 2, 2009. In the same year, IPOS also launched a PPH pilot program with the JPO on July 1, 2009. Recently, IPOS launched its third PPH pilot program, this time with the Korean Intellectual Property Office (KIPO). The PPH pilot program with KIPO started on January 1, 2013, and will end on January 1, 2015.
PPH in Singapore vs. PPH in the Philippines
In Singapore, there are three existing PPH programs namely: IPOS-USPTO, IPOS-JPO and IPOS-KIPO. On the other hand, Philippines has two existing PPH programs namely: IPOPHL-JPO and IPOPHL-USPTO. The requirements in filing a PPH request in Singapore and in the Philippines are, as follows:
If the applicant satisfies the requirements above, submission of the following documents is required in order to complete the PPH request in Singapore and in the Philippines.
PPH in Singapore
PPH in the Philippines
Advantages and Disadvantages of PPH
After almost seven years since the PPH began in 2006, patent practitioners as well as applicants are now reaping the benefits from the program. The PPH provides faster examination of a patent application. If at least one of the claims of the corresponding application is allowable/patentable, the applicant may have the option to file a PPH request. Hence, the grant rate will increase since the OSF will utilize the examination conducted by the OFF.
As patent filings worldwide are increasing, there is a need to provide an alternative route to expedite the examination of these applications. Indeed, the best route available at present is the PPH program, which not only speeds up the prosecution of patent cases but is also very cost-effective. There are some disadvantages of the PPH, but as the PPH network grows, its benefits will surely outweigh its shortcomings. There is no doubt that more ASEAN member countries will join the PPH network in the years to come.
Thursday, 25 July 2013 07:56
In Vietnam, the regulatory system to protect intellectual property rights was first put in place in 2005 through the Law on Intellectual Property. However, over the years, inherent deficiencies and administrative loopholes have severely undermined the efficacy of the system and made it difficult for the owners of IP rights and the authorities alike to take action against infringers.
In January 2013, the Vietnamese Government issued a Decree (No: 08/2013/ND-CP) (the Decree) to further cut down on red tape and make it easier to initiate action against counterfeiters. This Decree is in addition to the previous Decree No: 97/2010, which applies to administrative violations in IP. The issuance of these Decrees, together with other steps taken by the Vietnamese Government to curb IP violations, is a clear indicator of the Government’s intention to improve the robustness of IP rights in Vietnam.
Applicable to Vietnamese as well as foreigners, corporate and ordinary, and to all authorized licensees, the Decree deals with the acts of administrative violations, the forms and rates of penalties, the remedial measures for administrative violations, as well as the procedures and authority to impose administrative penalties for acts of producing and trading in counterfeit goods.
The main focus of the Decree is to stop the production and trading of counterfeit goods; as well, the Decree aims to protect consumers from counterfeit goods and secure IP rights for genuine owners. Each act of counterfeiting is subject to either of the two principal sanctions – warning or fine. Depending upon the nature and severity of violations, counterfeiters may also be subject to additional sanctions such as confiscation of material evidence including goods bearing counterfeit marks or geographical indications, raw materials and all items used in the commission of the violation such as labels, packages, machinery, etc.
There has been a paradigm shift in the way penalties will be handed out to counterfeiters. A detailed bracket has been introduced, proportionate not only to the value of the fake goods, but more importantly, based on the nature and seriousness of the offence committed. This will go a long way to ensuring that actions initiated against producers of counterfeit products, actually become worthwhile. Further, to avoid Vietnam being used as a base for in-transit counterfeit goods, there are also provisions for forcible expulsion and re-export of infringing goods from Vietnamese territory.
One of the most important aspects of the Decree is that it recognizes counterfeiting of certain essential products, namely, foods, medicines, fertilizers, food additives, breeds of plants and animals, animal feed, veterinary medicines, pesticides, cosmetics, medical equipment, cement, building steel and helmets, as a very serious offence for which the penalty can extend up to D70,000,000 (around US$3,500). Additional forms of penalties include confiscation of the exhibits and instruments for committing violations and temporary or indefinite revocation of the practice certificate or license of entities engaged in counterfeiting activities.
The Decree also provides sanctions, remedies and punishments for violations and the wrongful indication of IP protection on goods. The officials competent to impose administrative penalties shall on mass media, announce the names and addresses of the counterfeiters, the kinds of counterfeit goods, tips on identifying fake goods, the location where counterfeit goods were found, etc. Furthermore, there is now greater clarity regarding the roles of various government agencies. For example, the Vietnamese Police will handle cases involving production and trade of counterfeit goods, the Border and Coast Guard would handle export, import and trade of counterfeit goods across the border, while the specialized inspection agencies will focus on taking actions against local production and trade of counterfeit goods.
Another important feature of the Decree is that it provides a framework for the valuation of counterfeit products and the instruments or machinery used for committing the violating act. The valuation figure is also used for estimating the penalty or fine to be imposed upon the offending party. Generally, the market price of the genuine goods or of goods having similar technical features is considered as the valuation price of fake goods. If the valuation is not feasible on the basis of market prices, a valuation council would be organized to assist in the process.
The Decree has given more teeth to the existing IP law, and is sure to be welcomed wholeheartedly by owners of IP rights in Vietnam.
Thursday, 25 July 2013 07:55
In April, the Intellectual Property Office of the Philippines (IPOPHL) issued a series of office orders amending various trademark rules involving the Declaration of Actual Use (DAU) and (Paris) Convention priority applications.
Declaration of Actual Use
Date of First Use
Proof of Online Use
Declaration of Non-Use
Trademark Applications with Priority Claim
Further, if the only remaining requirement is the submission of the foreign registration, the examiner may terminate examination and order the publication of the application in the eGazette. However, the actual publication of the mark will be held in abeyance until such time as the foreign registration is available. The trademark owner will have a period of six months from the issuance of the Notice of Allowance to submit a photocopy of the foreign registration, with a 12-month extension available.
The above amendments relax the formalities required by the previous rules and are a welcome development for trademark owners and practitioners alike.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
Thursday, 25 July 2013 07:54
Hai Tong Co Pte Ltd, a Singapore company, is engaged in the business of importing, exporting and distributing cosmetic products under the LADY ROSE brand and has registered that mark in Class 3. Ventree Singapore Pte Ltd imported ROSE LADY brand cosmetic products from VOV Cosmetics in South Korea and distributed the products in Singapore.
Upon discovering that Ventree had been distributing ROSE LADY products, Hai Tong instituted proceedings for infringement and passing off before the High Court. While upholding the infringement claim, the court dismissed the passing-off claim, finding that Hai Tong had “trivial” goodwill and had failed to adduce sufficient evidence to demonstrate likelihood of damage.
Cross-appeals were filed to the highest court in Singapore, the Court of Appeal. It granted both the infringement and the passing-off claims. Hai Tong Co (Pte) Ltd v. Ventree Singapore Pte Ltd et al.,  SGCA 26 (Mar. 15, 2013).
With respect to infringement, the Court of Appeal held that:
With respect to passing off, the Court of Appeal disagreed with the High Court. It found that:
This decision is significant, as the Court of Appeal clearly articulated the tests to be employed in the determination of trademark infringement and passing off. Further, in holding that Hai Tong had sufficient goodwill, the Court laid emphasis on the quality, as opposed to mere quantity, of the evidence.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.