The Singapore High Court had to contend with a tsunami of trademark cases in the first half of 2012 when it adjudicated three major trademark infringement and passing off cases. Before being ‘swept away’ by the wave of IP jurisprudence, we set out below a summary of the facts and decisions. The first case pitted […]
Thailand - Smell and Sound Marks to be Introduced
Thailand has several amendments in the pipeline for the Trade Marks Act. Amongst them is the introduction of smell and sound marks. The bill extends the meaning of a "mark" to include non-visual trade marks such as sounds and smells, which will bring Thai trade mark law in line with international standards. To be registered, […]
Philippines - Marks Confusingly Similar Despite Differing Uses of Pharmaceuticals
In a case decided in March 2012, Sanofi Pasteur, the vaccines division of Sanofi-Adventis, successfully opposed the registration of COMAXIN in Class 5 by Getz Bros Philippines, Inc. based on the mark’s confusing similarity to the opponent’s mark COMBAXIM. In deciding the opposition, the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of […]
Philippines - Madrid Protocol Comes into Force July 25
The Philippines has become the 85th contracting party - and the third ASEAN member state after Singapore and Vietnam to join the Madrid Protocol. Philippines President Benigno C. Aquino III signed the instrument of accession on March 27, 2012; it was deposited with the World Intellectual Property Organization on April 25, 2012. The Intellectual Property […]
Thailand - Overcoming Trade Mark Refusals
Office Actions are issued by the Thai Department of Intellectual Property (DIP) on grounds of non-distinctiveness or identical/similar character to a well-known and/or registered mark. However, the procedure for evaluating the response is different from other jurisdictions, making Thailand a difficult territory for IP protection. For a non-distinctiveness objection, the trade mark owner will be […]
Thailand - Rights Of An Unregistered Trade Mark Owner
Thailand follows the first-to-file rule. To obtain protection of a mark in Thailand, a registration must be obtained from the Department of Intellectual Property (DIP) initiated by filing an application with the Trademark Office. Nevertheless, the “owner” of an unregistered mark or senior user is not without recourse. It cannot sue before the Thai courts […]
Thailand - Court Cases Cast Doubt On Well-Known Status
Despite guidelines from the Thai Courts on determining the identicalness and confusing similarity between trade marks seeking registration and prior marks: one statutory provision remains unclear. The Thai Trademarks Act’s prohibition of marks identical or confusingly similar to well-known marks, Section 8, read with Section 8 (10) provides that: “A mark registered or not, which […]
Malaysia - Court Of Appeal Addresses Passing Off
Malaysian law in relation to passing-off has been recently re-considered in extenso by the Court of Appeal in the case of Yong Sze Fun & Anor v Syarikat Zamani Hj Tamin Sdn Bhd & Anor [Civil Appeal No. W-02-367-2006]. One of the questions addressed and is in practice a common query: Does the infringing use […]
ASEAN and India - The Importance of Industrial Design Protection
Of the four pillars of intellectual property protection – patents, industrial designs, trademarks and copyrights – perhaps the most overlooked is that for industrial (ornamental) designs. In most countries, the available design protection is generally very narrow, with a minimal halo of protection around the exact design depicted in the application. Why would an applicant […]
Thailand - Decisions Confirm High Standard For Non-Use
A common fear among trade mark proprietors, particularly those with bigger, wider portfolios is that they might lose their title by not using registered mark. Thai Law does not require use of a Trademark per se to maintain registration, nor does any statement of use certifying that the trade mark has been used need be […]