Wednesday, 23 March 2016 06:06
Advertising agencies that make imitation or adaptation of work of others are producing what is illegal, therefore immoral and unethical.
In a recent case, Dentsu Utama, a Malaysian advertising agency, was accused of plagiarizing the artwork of British designer, Tom Anders. The ad agency however, has vehemently defended these accusations. The artwork by Dentsu Utama was for a World Wildlife Foundation (WWF) advertisement campaign which went on to win a prestigious award for advertising.
The respective artworks are shown in the diagram below.
Tom claimed copyright infringement. Tom claims that Dentsu Utama copied his artwork, and the level of copying was considered to be misappropriation.
Sources indicate that Tom’s artwork was published on the 27th of April 2014 while Dentsu Utama’s artwork was published on 22nd of July 2015. In light of the publication dates, Tom’s artwork would be the first publication.
Using a lay comparison, both the artwork shows that Tom’s gorilla is remarkably similar to Dentsu Utama’s. Both parties’ artwork makes use of circles; however, Dentsu Utama may have adapted the circles to give the impression of dissimilarity.
Erik Johansson’s ‘The Architect’ (left) and Dentsu Utama’s ad for Web Privacy Watch (right)
Dentsu Utama insists that the work is original and any similarity was coincidence. This defense appears weak as the advertisement agency has a history of producing artwork similar to others. In another cases, the Malaysian Association of Accredited Advertising Agents (4As) decided that the 'Professional Man' (above) was similar to the work of Swedish artist Erik Johansson's entitled The Architect.
The Association of Accredited Advertising Agents (4As) (organizers of the Kancil Awards) have disqualified Dentsu’s work and revoked the Kancil awarded to Dentsu Utama. In response to the decision by the 4As, Dentsu Utama has quit the 4As on the 8th of January 2016.
The Malaysian Intellectual Property Office (MyIPO) has recently introduced a voluntary notification system. It is highly advisable to make use of it as an added form of copyright protection for makers of any copyrightable work.
This article was first published in Volume 11, Issue 1 of the GALA Gazette. For more information, please visit http://galalaw.com.
Published in Malaysia
Friday, 15 January 2016 02:26
When a patent owner desires to abandon a patent, usually they simply do so by non-action, i.e. by stopping payment of the annuity fees. However, the same may not be true in Indonesia, and this has now become one of the most debated subjects among IP practitioners in this territory.
The relevant provisions are Articles 39, 88, 90 and 115 of Patent Law No. 14 of 2001:
(1) A patent application may be withdrawn by submitting a written request to the Directorate General.
A patent may be declared as canceled by operation of law if the patent holder does not fulfill his obligation to pay the annual fees within the period stipulated under this Law.
(1) If within 3 (three) consecutive years a patent holder has not paid the annual fees as stipulated in Article 18 and Article 114, the relevant patent shall be declared to be canceled by operation of law on the date constituting the time limit for the payment for the third year.
In general, annuity fees in Indonesia may be paid within three years or 36 months. Late payment charges will be imposed if the fees are paid within the 13th to the 36th month.
Based on the above regulations, the non-payment of annuity fees within the three year period will cause the patent to become null and void. However, if no action is taken by the patent owner, the unpaid annuity fees for three consecutive years must be settled because the patent remains in force during the period for payment of the annuity fee. Thus, in the event three consecutive annuity fees are not paid by the patent owner, the patent will be considered null and void by law. However, the patent owner has an outstanding obligation to settle the annuity fees and late payment charges corresponding to the three years that the patent has remained in force.
To prevent the unexpected accumulation of unpaid annuity fees and late payment charges, it is recommended that a request for abandonment be filed with the Indonesia Patent Office, if it is indeed the intention of the patent holder to abandon a registered patent. It is also recommended that the request for abandonment be filed before the end of the relevant protection period in order to prevent payment of the annuity fees for the succeeding years.
For example, if a patent was filed on December 16, 2008, and granted on March 13, 2013, and the patent holder wishes to abandon the patent at this time, provided all back taxes have been paid, the request for abandonment must be filed by December 15, 2015, so that the patent owner only has to pay the seventh year annuity fees. If the request for abandonment is filed between December 16, 2015, and December 15, 2016, the patent owner has the obligation to pay the annuity fees for the seventh and eighth year protection periods. Further, if no annuity fee payment is made starting from the seventh year protection period, the patent will be deemed null and void by March 13, 2018, and the annuity for the seventh, eighth and ninth year protection periods will remain payable by the patent holder.
The DGIP sends a total of three notices. If there is no settlement of the outstanding annuity fees, the matter will be endorsed to the Ministry of Finance of the Republic of Indonesia as a debt collection matter with a further penalty of 10% of the total amount due.
In other words, abandonment by non-payment or non-action on the part of the patent owner will only lead to outstanding annuity fees that will later be considered a debt even when the relevant patent is deemed null and void by law.
While the Indonesia Patent Law has been in force since 2001, it is only in recent years that the Directorate General of Intellectual Property Rights (DGIP) started sending notices of nonpayment of annuity fees directly to patent owners. Thus, in 2013, patent owners started receiving notices to settle outstanding annuity fees for patents that have been abandoned a long time ago.
Until the law is changed, patent owners are well advised to follow the rules of patent abandonment in Indonesia. Otherwise, patent owners may find themselves owing the Government of Indonesia for accumulated annuity fees and late payment charges.
This article was first published in Asia IP on November 30, 2015. For more information, please visit http://www.asiaiplaw.com/ .
Friday, 16 October 2015 02:00
In a recent hearing at the Intellectual Property Office of Singapore (IPOS), Converse Inc. (the opponent) failed in its attempt to prevent the registration of Trade Mark Application No. T0705265E (the application mark) in Class 25, filed by Southern Rubber Works Sdn Bhd (the applicant). The application mark is reproduced on this page along with one of the registered marks which the opponent sought to rely on in the opposition proceedings.
This article was first published in Asia IP on August 31, 2015. For further information, please visit http://www.asiaiplaw.com/ .
Thursday, 01 October 2015 07:43
The Supreme Court of the Philippines finally put to rest decades of dispute between Taiwan Kolin Corporation (TKC), a Taiwanese corporation, and Kolin Electronics Company, Inc. (KEC), a Philippine corporation. Both are engaged in the manufacture and sale of electronic products.
This case stemmed from an opposition case lodged by KEC (herein, respondent) against an application for registration filed by TKC (herein, petitioner) for “KOLIN” for use in Class 09, particularly: television sets, cassette recorders, VCD amplifiers, camcorders and other audio/video electronic equipment, etc.
In its opposition, KEC argued that TKC’s KOLIN mark is identical, if not, confusingly similar to KEC’s registered KOLIN mark covering the following products in Class 09: automatic voltage regulators, converters, chargers, rechargers, stereo boosters, AC-DC regulated power-supplies, step-down transformers and PA-amplified AC-DC.
Ruling in favour of KEC, the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines (BLA-IPO) rejected the application for registration of TKC and stated that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor in respect of the same or closely-related goods.
The BLA-IPO noted that there was proof of actual confusion in the form of consumers writing numerous e-mails to KEC asking for information, service, and complaints about TKC’s products.
Not the Classification Alone, But the Description of the Products
This time, it was KEC who appealed to the Court of Appeals.
Ultimately, the appellate court sided with KEC instead and sustained the finding of confusing similarity, as held by the BLA-IPOPHL and found that there are “no other designs, special shape or easily identifiable earmarks that would differentiate the products of both competing companies. Further, the Court of Appeals ratiocinated that, “the intertwined use of television sets with amplifier, booster and voltage regulator bolstered the fact that televisions can be considered as a normal expansion of Kolin Electronics, and is thereby deemed covered by its trademark as explicitly protected by the Intellectual Property Code.”
Hence, TKC elevated the matter to the Supreme Court. Finally settling what seems to be a legal conundrum, with the lower tribunals contradicting each other, the Supreme Court ruled favorably for TKC. Stressing two main points, the court found that: first, the products covered by TKC’s application and KEC’s registration are unrelated, and second, the ordinary intelligent buyer is not likely to be confused.
In finding that the goods covered by both the marks are unrelated, the Supreme Court stated that “the classification of the products under the Nice Classification is merely part and parcel of the factors to be considered in ascertaining whether the goods are related. It is not sufficient to state that the goods involved herein are electronic products under Class 09 in order to establish relatedness between the goods, for this only accounts for one of the many considerations.”
Credence was given by the Supreme Court to the petitioner’s contentions, to wit, “Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’ goods which are power supply and audio equipment accessories.”
At this point, the Supreme Court also extended the ordinary intelligent buyer to electronic products, stressing that “the products involved in the case are, generally speaking, various kinds of electronic products. These are not ordinary consumable items, like catsup, soy sauce or soap which are of minimal cost.
The products of the contending parties are relatively luxury items not easily considered affordable.” As such, it was expected that a buyer is more discerning, cautious and discriminating when purchasing electronic products and would prefer to mull over his purchase. Confusion and deception, then, is less likely.
This article was first published in Asia IP on July 31, 2015. For further information, please visit http://www.asiaiplaw.com/ .
Thursday, 01 October 2015 07:26
The Department of Intellectual Property (DIP) of Thailand has imposed a more stringent time limit for submitting formal documents for patent applications effective 21 July 2015.
Previously, patent applicants were allowed to file two 90-day extension requests, followed by a final 30-day extension request for submitting a notarized Power of Attorney, a Deed of Assignment (if applicable) and a Statement of Applicant’s Right to Apply for a Patent (if applicable). Under the new Regulation, patent applicants are required to submit the aforesaid documents within 90 days from the filing date in Thailand, which is final and non-extendable.
The deadlines for submitting a complete Thai translation of the specification and a Certified Priority Document remain the same.
* For non-PCT filings or national phase entries with list of inventors and applicants different from that in the PCT application
Friday, 04 September 2015 08:00
The Intellectual Property Office of Singapore (IPOS) has issued a practice direction allowing the registration of Graphical User Interfaces (GUIs) as designs under the Registered Designs Act (RDA) effective 11 December 2014.
One of the requirements to qualify for registration of design in Singapore is industrial applicability. In order to satisfy this requirement, GUIs must be applied to an article by any industrial process. Hence, when filing an application for registration of design via Form D3, the field provided for the article name must also indicate the article that the GUI is applied to, e.g. “electronic devices display, with Graphical User Interface applied to it”. Moreover, under the part on “statement of novelty” in Form D3, the applicant can select the option “Others” and provide a statement of novelty stating, e.g. “Novelty resides in the design applied to the electronic device as shown in the representation”.
GUIs may either be static (non-animated) or dynamic (animated). For a dynamic GUI, the GUI must be filed in an application consisting of a series of static representations where each representation, in consecutive order (drawing or photograph), shows a freeze-frame of the GUI in action. The parts to be claimed must be in solid lines while the parts not to be claimed must be indicated by broken or stippled lines, or shaded portions. The unclaimed portions must also be indicated in Form D3 in order to avoid any objections from IPOS. For clarity purposes, the applicant may provide a cover letter accompanying the Form D3 by describing the elements in the GUI for each representation.
Similar to filing normal design applications in Singapore, the registration of GUIs should contain a sufficient number of different views to completely disclose the appearance of the claimed design. The representations of the GUI may consist up to a total of 40 different views and at least 2 views should be filed for a single dynamic GUI. IPOS may allow the applicant to submit more than 40 views to be filed, upon filing of a request to do so.
Indeed, the possibility of registration of GUI is another milestone in designs regime in Singapore as it supports and encourages the growth of designs-related industries in the country.
This article was first published in Lexology on August 17, 2015. For further information, please visit http://www.lexology.com.
Tuesday, 21 July 2015 08:13
Lisbeth Enterprises Limited (the applicant), instituted a revocation action on the grounds of non-use against Procter & Gamble International Operations SA (the proprietor) for the subject mark which was registered in Singapore on June 1, 1981, in Class 3. The goods claimed were “Eau de Cologne, perfumes, essential oils, non-medicated toilet preparations, cosmetics, anti-perspirants, soaps, dentifrices and preparations for the hair.” While the applicant claimed that the mark should be revoked on the grounds of non-use for a continuous period of five years, the registered proprietor claimed that the subject mark had been used on a fragrance line endorsed by the singer Christina Aguilera.
The applicant operates fitness and beauty clubs in the Asia-Pacific region, with branches in Singapore, Malaysia, Thailand and Hong Kong. They applied for the word mark INSPIRE in Singapore, however the subject mark was cited as an earlier mark. Thereafter, the applicant commenced revocation proceedings against the subject mark.
Subject Mark for Revocation
Mark Being Used by the Proprietor
In this respect, the proprietor’s primary defence was that they commenced use of the subject mark prior to the institution of the revocation action by the applicant and that preparations for the commencement of use of the subject mark began before the proprietors became aware that the application for revocation might be made.
While considering whether the evidence of use of the subject mark submitted by the proprietor pertained to use in Singapore, the Registrar examined the dichotomy between the use of the mark on the internet and “the traditional tenet of territoriality in trademarks law.” The Registrar further took the view that the proprietor had taken no “active” steps with respect to the availability of the goods bearing the subject mark in Singapore beyond the listings available on the internet.
The Registrar further examined the date of use of the subject mark as submitted by the proprietor to support use of the mark in Singapore. The proprietor submitted that they had commenced use of the mark in early September 2008 and that preparations for use had commenced in 2007 before they were aware of a proposed revocation action. The revocation action was filed on October 16, 2008, in Singapore. The applicant argued, however, that they had filed a corresponding revocation action against the proprietor’s Hong Kong registration for the subject mark on February 18, 2008, as a result of which the proprietor would be well-aware before commencement of the use of the subject mark in Singapore.
While considering whether the subject mark had been used for the goods for which it is registered, the Registrar found that the subject mark is registered in respect of a wider specification than the use of the mark on the fragrance line endorsed by Christina Aguilera. In view thereof, the Registrar opined that even if the mark was considered to have been used in Singapore during the relevant period, the use would have been confined to specific goods and not for all the goods claimed under the subject registration.
The applicant further argued that the purported use of the mark by the proprietor did not pertain to the registered mark and was instead “INSPIRE”. In addressing this issue, the Registrar examined Section 22(2) of the Trade Marks Act which provides that “….use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered…”.The Registrar opined that “INSPIRE” and the registered mark would be considered to be substantially the same and therefore use of INSPIRE (if any) would be considered to be genuine use of the registered mark.
In considering whether the evidence of use of the subject mark as provided by the proprietor fulfilled all the criteria set out to establish genuine use of the subject mark, the Registrar found that the proprietor was unable to demonstrate genuine use of the subject mark in Singapore and that the grounds of revocation under Section 22(1)(a) and (b) of the Trade Marks Act succeed.
This decision by the Registry further reflects the policy consideration behind assessing genuine use of the mark in non-use revocation proceedings and sets out with clarity the considerations of internet use of the mark (i.e. mere advertisements of the mark on the Internet) as opposed to actual use of the mark (i.e. actual internet sales in Singapore of products bearing the mark), while evaluating bona fide use of registered marks in Singapore.
This article was first published in Asia IP on June 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .
Monday, 06 July 2015 01:38
Bridgestone Corporation (the Opponent), a Japanese tire manufacturer, successfully opposed the registration of R-STONE in the name of Jianxian Rubber Co., Ltd (the Respondent) in Class 12. In support of its opposition, Bridgestone argued that it was the first to use and register BRIDGESTONE in connection with the design, technology and manufacture of tires. Tracing the history of the first “BRIDGESTONE” tire in 1930, the Opponent argued that the ownership and association of the word “stone” as a distinctive element of its house mark BRIDGESTONE was bolstered by the acquisition of Firestone Tire & Rubber, along with the mark FIRESTONE in 1998. The Opponent also claimed that BRIDGESTONE is a well-known mark in view of its numerous trademark applications/registrations across the globe, totaling about 500, in addition to approximately 243 domain name registrations.
The Opponent further claimed that it had invested enormous resources in advertising and popularizing its BRIDGESTONE mark in the Philippines, and that the mark had been featured in various newspapers and magazine articles. Also, the Opponent had recently opened a 1,000-square meter showroom and service center in Bonifacio Global City, Philippines.
This article was first published in INTA Bulletin on June 15, 2015. For further information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.
Thursday, 18 June 2015 08:08
In Han’s (F&B) v. Gusttimo World [2-15] SGHC 39, Han’s filed an action against Gusttimo for infringement and passing off. Gusttimo simultaneously counterclaimed against Han’s for groundless threats of infringement proceedings and also sought to invalidate Han’s registered trademarks. Both ran businesses in the food and beverage industry in Singapore. The marks in question of both parties are categorized below.
Gusttimo argued, based on Section 23 of the Trade Marks Act, that Han’s marks are incapable of distinguishing their goods and services from that of others and that their marks are not distinctive because they make use of a common surname and should be invalidated. The judge, however, found that even a common surname is capable of distinguishing goods and services. Further, the fact that Han is a surname does not render it being devoid of a distinctive character, as it needs to be evaluated in light of the goods and services in question. Here, it was found that Han’s marks were not descriptive of the goods and services provided. Additionally, the judge held that the stylization of Han’s composite marks was sufficient to give the marks a distinctive character. It was further found that Han’s marks had acquired distinctiveness through use and thus Gusttimo’s counterclaim for this failed.
For Han’s infringement under Section 27 of the act to be successful, it had to show that Gusttimo’s mark is similar to Han’s marks, that they are used in relation to similar or identical goods or services and that there must exist a likelihood of confusion on the part of the public.
The judge found that there was high phonetic similarity between the marks. However, while there was visual similarity between Han’s word marks and Gusttimo’s mark, the level of similarity dropped when the comparison was made with Han’s composite marks, where the stylization of the composite marks emphasized the presence of the other elements in Gusttimo’s mark. The judge also held that the presence of an ’s in Han’s marks caused a marked conceptual dissimilarity with Gusttimo’s mark. Thus, it was held that while Han’s word marks were similar to Gusttimo’s mark, Han’s composite marks were dissimilar to Gusttimo’s mark.
Taking into consideration the goods and services provided by both parties, the judge found that the goods and services here are identical.
The judge went on to find that there was no likelihood of confusion in this instance. Taking a holistic approach, the more important aspects of similarity between the marks are that of visual and conceptual, which had earlier been found to be lacking. The survey results that had been produced by Han’s to evidence confusion were disregarded due to deficiencies in the conduct of the survey. It was also held that the reputation of a mark does not necessarily mean that there is higher likelihood of confusion as it may well work in the opposite direction. Here, the judge held that the success of Han’s chain was bound with the prominence of Han’s marks and this militated against any confusion occurring especially when the similarity between the marks were marginal. Accordingly, Han’s claim for trademark infringement was dismissed.
Han’s claim for passing off was similarly dismissed by the judge. Given the evidence before the judge, it was found that Han’s had established goodwill in Singapore, the first requirement for a claim in passing off. Han’s then failed to establish that there was misrepresentation caused by Gusttimo that created a likelihood of confusion. Gusttimo had given evidence showing that there was no deliberate deception in coming up with the name Han. It was also held that there was a marked difference between the sections of public targeted by both parties and this greatly reduced any likelihood of confusion. This point was bolstered by the difference in the fare and dining experience provided at the restaurants of the respective parties. As such, it was found that there was no misrepresentation that gave rise to any confusion and thus, Han’s action for passing off failed as well. Gusttimo’s counterclaim that Han’s made a groundless threat of infringement proceedings under Section 35 of the act failed simply because the letter from Han’s that was relied on by Gusttimo had been in relation to infringement arising from the application of the mark to the goods and the supply of services under the mark and thus was not groundless.
This case reasserts the fact that surnames are capable of being registered as a trademark. Further, the outcome of this case goes to show how even subtle differences in the appearance of a trademark can go a long way in distinguishing it from another mark, that at first glance may be deemed to be identical or similar to it.
This article was first published in Asia IP on April 30, 2015. For further information, please visit http://www.asiaiplaw.com/ .
Friday, 08 May 2015 02:12
Festina Lotus S.A (Proprietor) is the registered proprietor of the FESTINA mark. While the Proprietor does not have any business presence in Singapore, it claimed to have offered goods for sale online through various third-party websites, namely www.bodying.com, www.watchshop.com and in particular, www.brandsfever.com (Brandsfever), which is accessible by Singapore consumers.
The Proprietor furnished evidence of “genuine use” by various third parties of (i) website printouts, (ii) photographs of the mark and (iii) a letter from the director of Brandsfever of actual sales that had been tendered, thereby concluding that their goods had been offered to the Singapore public.
Romanson Co. Ltd (Applicant) applied for revocation of the FESTINA mark under Sections 22(1)(a) and (b) of the Singapore Trade Marks Act (Act), which provides that the registration of a trademark may be revoked if genuine use of the mark in the course of trade in Singapore has been suspended for an uninterrupted period of five years, unless there are “proper reasons for non-use.”
The Applicant relied on the evidence put forward by the Proprietor to argue that there was no genuine use in the course of trade in Singapore. The Applicant submitted that “genuine use” requires more than merely token use and is a question of fact, and that the Proprietor had not taken “active steps” to market the goods in Singapore.
The Applicant also submitted that the use shown by the Proprietor was insufficient because third parties do not have control over the use of the FESTINA mark. Further, the Applicant had commissioned a third party to conduct a market investigation on the use or non-use of the mark, and the investigator had arrived at the conclusion that there was no “relevant use” by the Proprietor of the FESTINA mark in Singapore.
In light of the evidence submitted, the Assistant Registrar said that use on the Internet may constitute genuine use even if there is no evidence of actual sales being made. However, the commercial exploitation of the mark has to be real. Token use or simulated use intended only for the mark’s protection and registration maintenance is insufficient to establish “genuine use.”
The Assistant Registrar also found that there was no “consent” by the Proprietor to the use of the FESTINA mark by the third parties for the purposes of Section 22(1) of the Act.
Assessing the circumstances of the case, the characteristics of the market concerned and the scale and frequency of use of the mark, the Assistant Registrar was convinced that the Proprietor did not put FESTINA to genuine use in the course of trade in Singapore and there were no proper reasons for non-use. Hence, the registration of the mark was revoked. Romanson Co., Ltd. v Festina Lotus, S.A. (February 6, 2015, SGIPOS 3).
This article was first published in INTA Bulletin, Vol. 70 No.8, April 15, 2015. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx