Introduction

On 4 February 2016, the Trans-Pacific Partnership (“TPP”) was signed between 12 countries, of which Rajah & Tann Asia is present in 3 (Singapore, Malaysia and Vietnam). Chapter 18 of the TPP sets out various provisions relating to intellectual property (“IP”) which signatories are expected to implement into their legislation, if these provisions are not already part of each signatory’s law. In this article, we hope to give a snapshot of the level of compliance of the current laws of Singapore, Malaysia and Vietnam with the IP provisions of the TPP, and provide some examples of areas where changes may be forthcoming in future.

Singapore

Singapore’s existing IP legislation is largely in compliance with Chapter 18, and there are only a few areas which may require changes to the existing laws.

In the area of Trade Marks, Article 18.18 of the TPP contains a requirement that a trade mark should not require that a sign be visually perceptible, and that it can be a sound. In addition, parties are also supposed to “make best efforts” to register scent marks.

Presently under Singapore law, while a mark does not have to be visually perceptible, and can be a sound, a registered trade mark does have to be capable of being represented graphically. While there is no prohibition on the registration of scent marks per se, the requirement for graphical representation has traditionally made it very difficult for one to register scent marks. Whether the present law represents “making best efforts” to register scent marks is perhaps something the lawmakers will have to consider, given the present difficulty in registering scent marks.

With regards to Copyright, Article 18.63(b) of the TPP contains a requirement that each party to the TPP provide that where the term of protection of a work, performance or phonogram is to be calculated, on a basis other than the life of a natural person, the term shall be (i) not less than 70 years from the end of the calendar year of the first authorised publication of the work, performance or phonogram; or (ii) failing such authorised publication within 25 years from the creation of the work, performance or phonogram, not less than 70 years from the end of the calendar year of the creation of the work, performance or phonogram.

Insofar as original works are concerned, the Singapore Copyright Act (“SCA”) does not contain the provision in Article 18.63(b)(ii) of the TPP, and as such time only starts to run when a work is first published. The SCA is likely to have to be amended to reflect that time starts to run from the date of creation if there is no publication of the work.

With regards to Patents, Article 18.45 of the TPP requires each party to the TPP to make available to the public (i) search and examination results, including details of, or information relating to, relevant prior art searches; (ii) non-confidential communications from applicants; and (iii) patent and non- patent related literature citations submitted by applicants and relevant third parties.

At the moment, search results for patents through the Singapore IP database do not produce all of such information, and it is likely that in future, search results for patents on the Singapore IP database will contain much more information about patents than they do now.

Malaysia

Like Singapore, Malaysia seems to be generally in compliance with the IP requirements of the TPP. The following Articles of the TPP would likely require further action by the Malaysian government.

With regards to Trade Marks the current section 3(2)(a) of the Malaysian Trade Marks Act (“MTMA”) defines use of a mark to be “use of a printed or other visual representation of the mark” which does not allow or makes it virtually impossible to present or use a scent or sound mark in a visually perceptible manner. In light of Article 18.18 of the TPP (which was discussed above), it is likely that the MTMA has to be amended to legally recognise and allow registration of non-traditional trade marks.

In addition, Article 18.27 of the TPP stipulates that no party to the TPP shall require the recordal of trade mark licenses to establish validity of the licence, or as a condition for use of the trade mark by the licensee to be deemed to constitute use by the holder for the purposes of enforcement. While the recordal of a trade mark license is not presently mandatory in Malaysia, it is highly recommended as it can be used to defend against any claims for non-use subsequently. As such, we are not anticipating a change in Malaysian law with regards to the recordal of trade mark licenses.

With regard to Copyright, Article 18.63 of the TPP requires that the period of protection for Copyright should be life of the author plus 70 years. Under the present Malaysian Copyright Act 1987 (“MCA”), the present term is 50 years, so this will have to be amended.

In addition, it is notable that Article 18.68 of the TPP appears to be sufficiently covered under the MCA. The 2012 amendment to the MCA makes it an offence for anyone to circumvent, or cause or authorise anyone to circumvent, technological protection measures used by copyright owners to protect their works, such as passwords, encryption, access codes, and watermarking. Such technological protection measures are necessary to prevent copying and restrict accessing of copyright works. It is also an offence for anyone to manufacture, import, distribute or possess any technology, device or component which is used, designed or produced for the purpose of enabling or facilitating the circumvention of technological protection measures.

With regards to Patents, Article 18.46 of the TPP provides for the adjustment of patent terms to compensate for unnecessary delays to the patent application process. At present, this is not currently provided in the Malaysian Patents Act 1983. If these changes are implemented, they are likely to be beneficial as they are likely to improve the efficiency of the Patent Office, they may expedite the patent examination process, and they will potentially allow the patent owner to commercially exploit the patent for the expected life of the patent.

Notably however, Article 18.46(4) of the TPP provides for the exclusion of periods of time that are not directly attributable to the patent application and the parties involved from the calculation of ‘unreasonable’ delays. Potential concerns are as follows:  (i) the ambiguous criteria may lower the barrier for drug companies to obtain patent term extensions beyond the standard 20 years; (ii) this may lead to substantial delays to the entry of cheap generic drugs into the Malaysian market.

Vietnam

Since 2005, Vietnam has had quite extensive IP Laws and Regulations, implementing international agreements administered by the World Trade Organisation (“WTO”) such as the Agreement on Trade- Related Aspects of Intellectual Property Rights (“TRIPS”). Specifically, the laws govern copyright and related rights, industrial property rights and rights to plant varieties. Although there are regulations in Vietnam covering IP, the TPP will affect further mechanisms for a range of different issues for IP rights including criminal enforcement and penalties, tackling the challenges of trafficking of  counterfeit goods, rights in the digital environment and modern methods of sharing and delivering content.

With regards to Trade Marks, under current Vietnamese Law, specifically at Article 72 of the Intellectual Property Law (“Vietnam IP Law”), sound and scent are not recognised as registrable signs for trademarks. In light of Article 18.18 of the TPP, Vietnam may have to make appropriate amendments to the local laws to implement the availability of registering trademarks under such categories, taking into consideration the existing principles and frameworks applied by other countries where sound and scent have been accepted as registrable signs.

With regards to Patents, the Vietnam IP Law does not currently allow for an extension of the patent term due to delay caused by the governing authorities. As such, in light of Article 18.46 of the TPP, changes may be required to the Vietnam IP law in this respect. This and some other articles of the TPP may have an effect in particular on pharmaceutical products in Vietnam.

With regards to Copyrights, cinematographic works, photographic works, stage works, applied art works and anonymous works are currently only protected for a period of 50 years from the date of publication. For compliance with the TPP, this will need to be changed to the life of the author plus 70 years.

Conclusion

These are just some of the areas where changes to local laws may be required for the ratification of the TPP. It is expected that the domestic ratification of the TPP should take place by 4 February 2018. While the TPP should result in changes to the laws of the countries that are party to it, specifically how each of these countries chooses to ratify the TPP remains to be seen. To be kept updated on changes to local laws, or for any queries as to how the IP provisions of the TPP will affect your business, please contact the partners below. Alternatively, if you will be attending the International Trademark Association meeting this year in Orlando, we will be happy to meet with you.