Intellectual Property Newsletter | November 2017 New Laws 1. Customs Measures Against IP Infringing Goods The Indonesian Government Regulation No. 20 of 2017 on Control of Import and Export of Goods Resulting from Intellectual Property Infringement ("Regulation 20/2017") came into effect on 2 August 2017. Under the Regulation 20/2017, copyright and trademark owners may file an application to the Customs Office to record their copyright and trademark. This allows the Customs Office to carry out customs restraint for imported or exported goods that infringe the owners' copyright and trademark. In addition, the Customs Office is also entitled to suspend the release of IP infringing goods from the customs zone based on (i) the result of a customs restraint; or (ii) the initiatives of the IP owner. 1. Music to the Ears of Trademark Owners: Thailand Opens the Door to Sound Marks The new Trademark Act, Trademark Act (No. 3) B.E. 2559 (2016) (the “Trademark Act”), which came into effect on 28 July 2016 introduced registration for sound marks. The issuance of Ministerial Regulation No. 5 B.E. 2560 (A.D. 2017) (the “Ministerial Regulation”) on 1 September 2017 made it possible to file applications for sound marks in Thailand. To register a sound mark, the applicant must include a clear description together with a clear audio Indonesia Thailand recording of the sound mark. The sound mark must satisfy the distinctiveness criteria and must not be identical or confusingly similar to a mark which is registered by another person for goods or services in the same and/or related classes to be registrable. 2. Importation of Counterfeit Goods into Thailand Under the New Customs Act The new Customs Act, which was published in the Government Gazette will become effective on 13 November 2017 replacing the current Customs Act B.E. 2469 (1926) and its subsequent amendments. Key changes in the new Customs Act include among other, provisions on the limitation period on post-clearance audit timelines, criminal penalties for offenses, presumed liability for company directors and/or authorized persons and the timeframe for consideration by the Appeals Committee. 3. Draft Amendment to the Thai Patent Act The draft amendment to the Patent Act introduced many changes which include a new section on Access to Genetic Resources and Benefit Sharing, a new ground for granting compulsory patent licensing and a new stage in the Thai patent process. The Draft has not yet been finalized and is still subject to a public-hearing process. Recent Cases 1. Non-use Investigation Report Liwayway Marketing Corp v Oishi Group Public Co Ltd The courts considered the question of whether the period of “continuous period of not less than three years” may be truncated and computed segmentally . It was held that in order to file for expungement for non-use of a mark, the investigation must have sufficient coverage on the whole period of non-use and all the classes of the mark in which the non-use is alleged. Therefore, it is important to note that investigations need to cover the entire period of non use and relevant classes in accordance with section 46(1)(b) of Trademarks Act. This is in addition to compliance with the Whitford Guidelines. 2. The Impact of Foreign Cases GS Yuasa Corp v GBI Marketing Malaysia Sdn Bhd The Court held that a foreign judgment, especially decided at the apex court, on an issue regarding IP rights of a particular product should be considered in Malaysian Courts if an identical or similar issue also arises for the same product in Malaysia. Although not binding, it will ensure the consistency and predictability in the protection and enforcement of IP rights of that product in different jurisdictions. In this case, the Court also affirmed the test for establishing fraud whereby the following elements must be satisfied: an actual deception and intention to deceive; an actual injury or possible injury by means of deceit; and actual knowledge that the act was calculated to injure one’s neighbour. Malaysia 3. Personal Liability for Company's Infringement Chanel v Melwani2 International Sdn Bhd & Ors And Other Cases The Court held that an individual may be personally liable for a company's infringement of a registered trade mark under s.38 of the Trademarks Act if the corporate veil can be pierced. 4. Protection of Confidential Information from Use by Former Employees Juris Technologies Sdn Bhd and Natsoft (M) Sdn Bhd v Foo Tiang Sin & 5 Ors In this landmark case, the Malaysian Courts laid down several important precedents and held as follows: In current times, employees could still be considered to be working "in the course of employment" even if any activity was conducted outside office hours and outside the office premises; While not all employees are in a fiduciary position (in addition to having a duty of fidelity), employees including directors who are trusted with greater responsibility owe a higher duty as a fiduciary; The judge directed a judicial assignment to the Plaintiffs of all software which the Defendants developed (whether or not they had infringed the Plaintiffs' software) while they were employed with the 1st Plaintiff. This is the first time such a judicial assignment of copyright has been ordered in Malaysia; The judge also granted a springboard injunction which negates any advantage the Defendants had when they unlawfully took confidential information and the software of their employer. The springboard injunction essentially restrains the Defendants from being involved in a similar business as their employer for a few years. This is also the first time in Malaysia where a springboard injunction has been granted. The judge also took cognizance of the fact that in the software industry, IP assets are the main assets of companies and in view of the ease of copying and transferring of information and software, the judge granted exemplary, punitive and additional damages against the Defendants in order to punish and send the ‘right’ message to the industry. This was over and above the grant of damages, account of profits ordered and permanent injunction granted. This has been one of the most threatening messages sent by the IP Court. 1. Limited copyright protection for compilations of fact, including directories Global Yellow Pages Ltd v Promedia Directories Pte Ltd The Court of Appeal held that copyright did not subsist in the Global Yellow Pages' directories, because it amounted to a fact-discovery exercise or lacked creativity. Copyright also could not subsist in the seeds because the seeds were short literary works, and did not offer any information, instruction or entertainment. The apex court also held that even if copyright subsisted, there was no infringement as Global Yellow Pages had failed to show that Promedia had saved or printed a substantial number of pages. This decision illustrates that copyright protection over compilations of fact, including directories, is limited. In addition, one would likely have to show that there was a complete or substantial similarity of the works to prove infringement. 2. Purpose-limited product claims for second medical use permissible in Singapore Warner-Lambert LLC v Novartis(Singapore) Pte Ltd Singapore This case is a landmark decision in patent law as it was the first time the Singapore courts explored the permissibility of Swiss-style claims and whether second medical uses of known substances are patentable. The Court commented (in obiter) that Section 14(7) of the Patents Act appeared to support the patentability of second and subsequent medical uses of known substances. This is contrary to the UK approach, where the equivalent provision (i.e. Section 2(6) of the UK Patents Act 1977) has been interpreted as protecting only the first medical use of known substances. As such, the Court observed that it might no longer be necessary for inventors to resort to Swiss-style claims to frame second and subsequent medical uses, since purpose-limited product claims (in the form of Compound X for use in the treatment of disease Y) may sufficiently cover second and subsequent medical uses. Latest News 1. Indonesia Officially Joins the Madrid Protocol The Ministry of Law and Human Rights of the Republic of Indonesia submitted its instrument of accession to the Madrid Protocol, officially making Indonesia the 100th member of the Madrid Union and the eighth member of ASEAN to access the Madrid Protocol. Once the Madrid System comes into force in Indonesia on 2 January 2018: (i) owners of existing International Registrations can file a subsequent designation and extend their trademark protection to Indonesia; (ii) Indonesian entities may use the Madrid System to file international trademark applications and designate the other member states of the Madrid Union; and (iii) trademark owners in other member states will be able to designate Indonesia when they file an international trademark application. The Indonesian government is currently preparing and finalizing a detailed implementing regulation on the Madrid Protocol in Indonesia, and is expected to issue this regulation in late 2017. 1. Philippines Retains Positive Rating in USTR Special 301 Report The Philippines maintains its exclusion from the list of countries which do not provide adequate protection of intellectual property found in the United States Trade Representative (USTR) Special 301 Report, an annual report of the US that evaluates the level of protection and enforcement of intellectual property rights of its trading partners. The Philippines has been out the list for four consecutive years now, having been removed from the list in 2014, after having been on the list for more than twenty (20) years. Director General of the Intellectual Property Office of the Philippines (IPOPHL), Josephine Rima-Santiago, says that this latest development is a testament that the Philippines has sustained the reforms that it initiated to provide the most adequate and effective level of protection and enforcement of intellectual property rights. Indonesia Philippines 1. Upcoming Amendments to the Registered Designs Act Changes to the Registered Designs Act ("RDA") are expected to come into effect in the fourth quarter of this year. A summary of the proposed amendments to the RDA are set out below: The definitions of "design" and "article" in the RDA will be amended to clarify that any thing that is manufactured, whether by an industrial process, by hand or otherwise, can be protected under the RDA. The definition of "design" will also be amended to accord protection to colors as a design feature; A new definition of non-physical products will be introduced that will allow virtual or projected designs to be registrable (provided that they are capable of being represented clearly and without subjectivity, and retain the same or substantially similar design features irrespective of the surface or medium they are projected on); Ownership of design rights will now automatically vest with the creator, and not the commissioner, of a commissioned work; The duration of the grace period will be amended from the current 6 months to 12 months and current restriction requiring disclosures to be made only at selected international exhibitions will also be removed; and Multiple designs can be filed in a single application more easily. Given that many aspects of our existing RDA are based on the old UK Registered Designs Act and are outdated in light of technological advancements and evolving business models, the reform of the designs regime will keep the RDA relevant to modern businesses while continuing to balance the interests of the design creators, owners and users. 2. Broadening of Public Disclosure Grace Period with Amendments to Patents Act The Patent (Amendment) Bill was passed on 28 February 2017. One of the key provisions is the broadening of the public disclosure grace period. Presently, the grace period provision in the Patents Act (Cap. 221) stipulates that disclosure of an invention will not be considered part of the "state of the art" under limited circumstances, such as if the invention is disclosed within 12 months at one of the international exhibitions on a limited list or in a publication of a learned society. Under the proposed amendment, any disclosure by the inventor will be covered by the grace period provision. This broadening of the public disclosure grace period is consistent with the approaches taken in the U.S., Australia, Japan and South Korea. This proposed amendment is anticipated as it updates our patent regime to reflect on modern realities and practices, as well as encourages knowledge sharing while preserving the inventor's commercial interests. Singapore 1. Thailand Finally Joins the Madrid Protocol On 7 August 2017, Thailand joins the membership of the Madrid Protocol for the International Registration of Marks with the World Intellectual Property Organization. The Madrid Protocol will become effective in Thailand on 7 November 2017, allowing brand owners in Thailand to seek registration for their marks in 114 territories of the other 98 member countries through a single application filed with the Department of Intellectual Property and payment of a single set of official fees. 2. Recent Initiatives of IP Enforcement in Thailand The Thai Prime Minister and the Department of Intellectual Property (the "DIP") are focused on substantially reducing the number of counterfeit products in the market as part of an effort to have Thailand removed from the Priority Watch List by the United States Trade Representative . The government is conducting negotiations and deploying military officials with expectations to prevent and/or suppress the sale of infringing goods in the "Red Zone" before August 2017. In addition, the Amendment to the Thai Computer Crime Act became law in May 2017. 3. Update on Section 44 to Speed Up Patent Backlog Clearance On 28 February 2017, the Prime Minister's Office announced that the Cabinet and National Council for Peace and Order approved a request from the DIP to solve the problem of a backlog of unexamined Thai patent applications by issuing an appropriate order under Section 44 of the Interim Constitution of 2014 (the “Interim Constitution”). The proposed scheme in applying section 44 of the 2014 Interim Constitution will be divided into Modified Substantive Examination and Reexamination. However, there are doubts to the effectiveness of the scheme and objections to the application of such scheme to pharmaceutical patents that came from incremental inventions. 4. The Intellectual Property Office of Singapore (IPOS) Classified as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for International Patent Applications Filed by Nationals and Residents of Thailand In April 2017, the World Intellectual Property Organization (WIPO) announced in its Newsletter that the DIP has classified the Intellectual Property Office of Singapore (IPOS) as another competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international patent applications filed by nationals and residents of Thailand with the DIP or the International Bureau of the WIPO as the receiving office. Thailand 1. New Notice Regarding Grant of Copies of Documents Issued and Archived By The NOIP And Certified Copies of International Trademark Registration Designations in Vietnam The National Office of Intellectual Property of Vietnam (the "NOIP") issued Notice No. 6432/TB -SHTT which temporarily provides that the issuance of Certificate of Registration for a national and trademark registration is free of charge. The NOIP will only provide a maximum of five copies of documents issued and archived by the NOIP for each request. As for the issuance of certification of an international trademark registration designating Vietnam, the NOIP Vietnam will only provide one certified copy for each registration per request. Contact Us Daru Lukiantono Partner, Jakarta daru.lukiantono @bakernet.com Kherk Ying Chew Partner, Malaysia kherkying.chew @wongpartners.com Bienvenido Marquez III Partner, Philippines bienvenido.marquez @quisumbingtorres.com Andy Leck Managing Principal, Singapore andy.leck @bakermckenzie.com Say Sujintaya Partner, Thailand say.sujintaya @bakermckenzie.com Manh Hung Tran Principal, Vietnam [email protected] Disclaimer - Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "partner" means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an "office" means an office of any such law firm.