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Thursday, August 25, 2016

Goods v services infringement in Indonesia



A longstanding dispute highlights the difference between goods and services and specifically retailing in infringement assessment. The Plaintiff PT Multicom Persada Internasional owns the i BOX trademark registration in class 9 for computer peripherals and software. The Defendant PT Data Citra Mandiri opened Apple product retail outlets in 20 locations in Indonesia under the name iBox. The Plaintiff sued for infringement - details here.  The Plaintiff claimed substantial financial losses and intangible damage.
The Defendant requested the Central Jakarta Commercial Court to dismiss the Plaintiff's claim due to errors in their name and address in the claim. They also argued the marks and goods are not similar. But the Central Jakarta Commercial Court rejected the Plaintiff's case so they filed a cassation appeal at the Supreme Court.
The Supreme Court has now rejected the Plaintiff's appeal. The Panel of Justices found that despite the similarity in pronunciation, both trade marks use different letters, shapes and are in different classes.  The class point is perhaps the most important althought these two could be considered connected channels of trade. Infringement cases are relatively rare so this kind of jurisprudence is useful to see.

Wednesday, August 17, 2016

Thailand to introduce plain packaging next

Thailand looks to become the next country to adopt plain packaging for cigarettes. The draft Tobacco Consumption Control Act from the Health Ministry has been sent to the Council of State for review.
This will create a standard form of cigarette pack. Much arger warning labels will be needed. Trademark size will be reduced. Other brand elements from imagery to corporate logos to colours will be prohibited. 

The law is being driven by health concerns given Thai consumption of 32 billion cigarettes a year. Excise rises haven't reduced smoking it is said. 

In the region other countries are mulling the issue, with Malaysia thought to be next. The law may take time to enact; and as elsewhere cigarrette companies may challenge it.

Tuesday, August 9, 2016

Indonesia's new patent law amendments pass

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Indonesia's new patent law was passed by the House of Representatives plenary session at Parliament, Senayan, Jakarta on Thursday 28th July. It replaces the current Law No. 14 of 2001 on Patents. The Bill is expected to come into force and take effect within 30 days. The new law contains various amendments to Indonesia's patent system:

1. Adopting electronic systems to improve patent prosecution along with shorter timeframes for prosecution.
2. Exemption from criminal and civil liability for parallel imports.
3. Expansion of simple patents to include processes.
4. Bolar provisions are expanded to 5 years and protect from civil and criminal liability.
5. Second medical use patents are allowed; also new forms of known compounds provided they increase efficacy.
6. Addition of computer implemented inventions as patentable subject matter.
7. Employee remuneration provisions that balance consideration of the economic benefits of the patent with contractual agreement.
8. Continuation of the controversial working requirements for patents in Indonesia to drive investment and technology transfer.
9. Post grant amendment for errors.
10. Reform of the controversial maintenance and annuity provisions, at least for new patents.
11. More detail on compulsory licensing, specifically licenses for export to disease affected countries.
12. Increases in criminal penalties against patent infringers that cause health harm, environmental damage or death (following the recent health scares)
13. Obligation to disclose clearly the origin of genetic resources and / or traditional knowledge in patent descriptions. This is in line with the Nagoya Protocol to protect Traditional Knowledge and Genetic Resources.

These amendments are largely reasonable and should help Indonesia develop its patent system further. As ever though, implementation is critical.

Friday, July 29, 2016

Wide-ranging trademark dispute in Vietnam escalates to court

A civil lawsuit by Ngan Anh Enterprise against the National Office of Intellectual Property (NOIP) in the Hau Giang Province Court is an interesting challenge to the government's approach to deciding trademark similarity.

Ich Nan Pharma Co. Ltd makes and sells a food supplement with anti-aging properties under the mark “Bảo Xuân & device” was registered under Reg. No. 0172843 covering medicines and nutritional foods used in healthcare in Class 5.
Ngan Anh Enterprise makes and sells a skin cream with whitening properties. Ngan Anh filed an application covering cosmetics in Class 3 which was refused for being confusingly similar to Ich Ngan's prior mark “Bảo Xuân & device”. The two products are shown - there is no obvious similarity.  

Over several years a series of enforcement actions were undertaken by Ich Nhan leading to the following decisions against Ngan Anh -

·       Following Ich Ngan's compliant on 8 Oct 2012, the Vietnam Intellectual Property Research Institute (VIPRI) made an assessment that the mark used by Ngan Anh infringed Ich Nhan’s mark.
·       On 9 November 2012, in a Working Minutes of the MMB of Hau Giang Province, Ngan Anh admitted infringement and undertook not to manufacture, trade in cosmetics bearing “Bảo Xuân” mark.
·       On 13 November 2012, in an Official Letter for an administrative penalty against Ngan Anh, the MMB of Hau Giang Province stated that Ngan Anh also promised to destroy all infringing products within 40 days.
·       In May 2013, the Hanoi MMB issued many sanction decisions against drugstores trading in the cosmetic products bearing the Bảo Xuân mark manufactured by Ngan Anh.
·       On 10 June 2016, the Inspectorate of Ministry of Science and Technology issued a sanction decision against Ngan Anh for manufacturing the infringing cosmetic products

After refusal of its trademark application in 2015, Ngan Anh filed a case against the National Office of Intellectual Property (NOIP - Defendant), in the Hau Giang Province Court. The case related to the NOIP refusing to grant their trademark registration for the mark Bảo Xuân. The NOIP's refusal was based on Article 74.2e and 74.2g of the IP Law that there was a conflict with another registered trademark for associated goods/services - Bảo Xuân in the name of Ich Nhan.  Ngan Anh argued in the lawsuit against the NOIP to reverse the decision on the basis that the goods are different - theirs are class 3 cosmetics while Ich Nhan registered for class 5 medicines. The Court of Hau Giang Province ruled in favor of Ngan Anh Enterprise in 2016.

The NOIP has now filed an appeal against the Court’s decision on the basis that the Nice Class system is not absolutely determinative of similarity.  The case pits virtually the entire Vietnam enforcement system against Ngan Anh.  The products have an identical mark, which is probably the source of Ich Nhan's concern, but the goods are arguably not the same.

Tuesday, July 26, 2016

Indonesian cigarette trademark infringement dispute burns out

Gudang Baru infringements
The Supreme Court has put to rest a lengthy dispute over one of the most well-known Indonesian cigarette brands. GUDANG GARAM is one of the most famous clove cigarette brands, an icon of its producer, now a huge public listed company Gudang Garam Tbk. 

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Gudang Garam product

PR Jaya Makmur manufactured and sold its own clove cigarettes using the GUDANG BARU trade mark for several decades.  They appeared in a pack similar to Gudang Garam Tbk's flagship product. PR Jaya Makmur's owner Ali Khosin has 2 registrations for pack designs from 2005 but these differed slightly from how he used the mark - his actual packs appeared much closer to Gudang Garam Tbk's. In December 2010 and March 2011, he received warning letters from PT Gudang Garam Tbk concerning the use of similar trade marks and logos.

Gudang Baru marks
Litigation over the trademark started some years ago. In 2014, the Supreme Court rejected the appeal filed by Gudang Garam Tbk to cancel the GUDANG BARU marks, citing no similarity. However these were pack label designs, incorporating multiple elements, not just the words, rather than the actual packs he sold.

So Gudang Garam Tbk filed a criminal complaint. The Prosecutor claimed that similarities in the shape, placement, and colour compositions, with only differences in how it is pronounced made this a criminal counterfeiting case. This led to a criminal trial and the first instance Kepanjen District criminal court and the Surabaya Court of Appeal decided to sentence Ali Khosin to 10 months imprisonment and a IDR 50,000,000 (USD3,800 fine for trademark infringement.  Khosin filed a petition for reconsideration at the Supreme Court.

The Supreme Court upheld the appeal. Much of the appeal was on technicalities, whether the case qualified for a reconsideration appeal at all. However a dissenting opinion by of the Justices, Dr. H. Suhadi, S.H., M.H., was that the Accused's reconsideration appeal should be granted. Overall it looks like the right decision against a clear infringer on the merits however.  


Tuesday, July 19, 2016

Philippines Supremes affirm Madrid

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The Supreme Court (SC) on July 19th affirmed the 2012 accession to the Madrid Protocol. A petition was filed by the Intellectual Property Association of the Philippines (IPAP) against the President's ratification of the Madrid Protocol. See here for previous reports.

The SC unanimously dismissed the petition in which IPAP challenged the constitutionality of the Philippines’ accession to the Madrid Protocol by Executive action, without the agreement of the Senate.

IPAP's concern was alleged to be that foreign trademark applications would be automatically given protection under Madrid without designating resident agents as required by Section 125 of the IP Code. This supposed conflict led to the case. Others suggested it was concern about loss of fees from foreign work.  

In any event Madrid is popular with international companies generally due to simplicity and cost. Many Philippines companies now use it too, to get overseas protection. 

Friday, July 15, 2016

Prada's Indonesia dispute escalates

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Indonesian apparel company PT Manggala Putra Perkasa has quite an array of businesses. They own trademarks including a large number of POLO and RALPH LAUREN brands and logos. They also have a number of BEVERLY HILLS POLO CLUB marks and also PRADA marks. They operate a large number of clothing lines under these brands such as the shop pictured.

At present, they are in the middle of a longstanding trade mark dispute with Prada S.A. Prada filed a cancellation action against PT. Manggala Putra Perkasa's registrations for the PRADA mark in class 18 and 25 on the basis that Manggala's marks are similar with Prada's well-known mark. Prada won, but an appeal is pending.

Concurrently, PT. Manggala Putra Perkasa sent warning letters to Prada S.A's distributors in Indonesia and also reported the distributors to Directorate of Investigation and Disputes at the Indonesian IP office.  They claimed the distributors' activities to import and distribute products bearing the (genuine) PRADA mark have resulted in damage amounting to IDR 51.4 billion.

This is one of a number of entrenched trademark piracy cases, where local companies have built large successful business based on early registration of foreign marks. This dispute shows that where there is a large successful business behind a pirate mark that IP holders should expect the defendant to fight back.