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South-East Asia IPR SME Helpdesk Case Studies 2015-2018
A trade mark owner in the Philippines found out that a local retail shop had been selling counterfeit products that infringed his registered trade mark for quite some time and it wanted to stop this illicit activity which was incurring economic damages to his company.
A chemical manufacturer was unsure about the provisions on potential patent invalidation of the new Patent Law of Indonesia, which sets a new potential ground for patent invalidation and came into effect in August 2016. Based on the new Patent Law, any patent might be vulnerable to invalidation if the patent holder does not produce the products or use the process within Indonesia. Given that the law is quite recent, it remains uncertain how the provision will be interpreted in court.
A famous fashion designer was planning to promote its brand in Indonesia. However, after carrying out a trade mark search, it discovered that a third party had registered that trade mark in Indonesia. As trade marks in South-East Asia follow the ‘first-to-file’ principle, the fashion designer cannot register the mark in Indonesia anymore even though it owns the mark in several other countries.
The European company (“Company A”) duly registered its trade mark in relation to cosmetic products in Cambodia. Subsequently, it granted exclusive distribution rights of the cosmetics bearing its registered trade mark (the “branded cosmetics”) to a local distributor in Cambodia (“Company B”), who has filed and recorded its exclusive distribution right with the Department of Intellectual Property Rights (DIPR) of the Ministry of Commerce (MOC) according to Cambodian regulations. Recently, Company B has discovered that a third party (“Company C”) practiced parallel import of the branded cosmetics into the Cambodian market.
Samsonite IP Holdings Sarl (“Samsonite”) granted its Chinese subsidiary a license to use the SAMSONITE marks in China. Through a co-branding agreement with Lenovo PC HK Ltd (“Lenovo”), it was mutually decided that Samsonite would supply specific models of SAMSONITE backpacks to Lenovo. These backpacks were to bear at least one of the SAMSONITE marks as well as the LENOVO mark. Lenovo would then give away the backpacks in conjunction with the sale of certain models of LENOVO laptops, exclusively within China.
A foreign Pharmaceutical company (“Foreign Company”) owned a Malaysian Patent covering a pharmaceutical product of alendronic acid or a pharmaceutically acceptable salt (alendronate) to inhibit bone resorption in humans. Whereas, a Malaysian company (“Malaysian company”) was granted approval by the National Pharmaceutical Control Bureau to market "Alendronate" 70 mg tablets.
ASEAN IPR SME Helpdesk Case Studies 2013-2015
Background In an ongoing case, a European engineering firm, PT Basuki, filed a claim against a large construction company in Indonesia and several other parties, for the misuse of its secret know-how in boiler construction. PT Basuki claimed that its secret boiler design know-how was used by the defendant to develop similar products, however, PT Basuki's claim was dismissed by the Bekasi District Court. The judges reasoned that the Commercial Court rather than the District Court ought to have jurisdiction over the case because the case concerned intellectual property, and the Commercial Court had previously heard a related industrial design case between the same parties. However, the Supreme Court upheld the plaintiff's appeal against the case dismissal. The case was sent back to the Bekasi District Court to be retried and is still on-going. The Supreme Court ruling confirms what the law has already stipulated - the case was correctly brought before the district court in Bekasi. The initial rejection of the case by the District Court was incorrect and can only be explained by their difficulty with, and lack of experience in, handling trade secret issues. This is a common problem in developing IP jurisdictions in Southeast Asian countries where trade secret issues are seldom brought before the courts despite the fact that the law may provide for it. The new Indonesian Electronic and Information Technology Law also contains provisions against unauthorised access to computer systems. However, we have yet to see an actual application of these provisions.