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Manage your Intellectual Property in South-East Asia

Case Studies

Case Study 21 – Inexperience of Indonesian courts with trade secret cases

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.

Case Study 20 - Theft of trade secrets and tracking electronic data in Singapore

Background Trade secret theft can be extremely difficult to detect and even harder to prove in a court of law. In some cases, victims may even hold strong suspicions over the loss of certain trade secrets to former employees but, as is often the case, are unable to take any action to redress losses because of a lack of proof. In 2010, several relationship managers of a European bank in Singapore left en masse to a rival bank. Prior to leaving the bank, they emailed data from the bank's computer system to their own personal email accounts; they also accessed and printed confidential company data. Nowadays information accessed by such means can easily be gathered from system logs, and recent advances in computer forensics have made it easier to retrieve deleted files. Thanks to such information gathering systems, these employees were subsequently charged in a Singaporean court for the unauthorised access of confidential client data.

Case Study 19 – Generic drug manufacturer in Vietnam infringes process patent of British pharmaceutical company

Background

A British pharmaceutical manufacturer is a market leader in the production of an anti-cancer drug, which it has been exporting to every major developed country for the last 20 years, and also more recently to developing countries, particularly in Southeast Asia.

The active ingredient of the drug was patented (product patent), but the original patent expired 3 years ago. However, a new improved process for making the drug was patented 10 years ago (process patent), and this patent is still in force in various countries, including Singapore, Malaysia, and Indonesia.

Two years ago, the manufacturer found out that a generic manufacturer based in Vietnam was making and exporting the anti-cancer drug to Malaysia, and being sold in these countries for half the price of their own drug. This was having a serious adverse effect on sales.

Case Study 18 – Patent ownership dispute in Southeast Asia (Indonesia)

Background

A Belgian entrepreneur set up a local food processing operation called ‘BE Food’ in Indonesia. One of their plant managers developed an innovation to the existing raw material cleaning process. The Belgian entrepreneur, believing that BE Food could commercialise this process by manufacturing equipment with this innovation, offered a reward-sharing scheme and brought the plant manager to an attorney to discuss future contractual arrangements, as the existing employment agreement was silent on ownership of intellectual property in inventions.

In the meantime, the plant manager secretly instructed a patent attorney to apply for a patent in his own name. The patent was drafted by a local attorney in the Indonesian language (Bahasa Indonesia).

As soon as the Belgian entrepreneur discovered the patent filing, he asked the plant manager to surrender the patent application to BE Food. The plant manager refused.

Case Study 17 – Importance of specifying copyright ownership in employment contracts (Indonesia)

Background

A database formula which calculated land use in the mining industry was jointly developed by staff of a European structural engineering company based in Indonesia and one of its former employees. However, the former employee in question registered copyright of the database formula after it had been jointly developed and put to first use by the European company.

Case Study 16 - On-going Partner and Employee Due Diligence (Singapore)

Background                                           

A European craft beer company wishes to open a bar in Singapore.

 

Action taken

The European company decides that it will simply license the Singaporean partner to use its trade marks and sign up to a written one-year exclusive distribution deal. It allows the partner to register a local company which incorporates its business name and trade marks, to register its trade marks in Singapore, and to register a local domain name.

Case Study 14 – Trade Mark Opposition Appeal in Singapore

Background

Company A is a media company in Singapore with commercial interests in television, radio broadcasting and print publishing. The company operates an English news channel and is the registered proprietor of the ‘HHH’ Mark in Class 35 (Advertising; Business Management; Business Administration and Office Functions) of the Nice Trade Mark Classification System. Company B is a media and entertainment company which provides direct-to-home satellite television services in Malaysia and Brunei, amongst others. Company B applied to register a mark, the ‘BBB’ mark, which was allegedly similar in design to that of Company A, who then relied on sections 8(2) (b) and 8(3) of the Trade Marks Act to oppose Company B’s application. However, the Trade Marks Registrar concluded that there was a low likelihood of confusion between the marks. Company A then appealed to the High Court against the Registrar’s decision.

Case Study 13 – Similarity of Goods & Services: Trade Mark Registration in Vietnam

Background
A well-known German company, a producer and distributor of eyewear, sunglasses and protective helmets, applied for trade mark protection under the Madrid system for its brand ‘X’ in 2010. The registration was applied for ‘goods & services’ in international trade mark classes 6-20, 35-37, and 39-41 (these categories indicate the type of product and must be used when filing for trade mark registrations internationally). Following the application, the brand ‘X’ was successfully registered in many countries worldwide. One of the designated countries was Vietnam.

Case Study 12 – The Importance of Registering your Trade Mark in the Philippines

Background
In 1994, the German company Birkenstock Orthopaedie Gmbh & Co., filed several trade mark applications for its mark ‘BIRKENSTOCK’ and its variants in the Philippines. To its surprise, Birkenstock learned that its ‘BIRKENSTOCK’ trade mark was already registered to a Philippine company called Philippine Shoe Expo Marketing Corporation (Shoe Expo).
Birkenstock quickly filed actions for cancellation against the registered mark. While the cancellation case was pending, Shoe Expo failed to file the required 10th year Declaration of Actual Use (DAU). Failure to file the DAU results in the trade mark registrations being deemed withdrawn. Because of this, the cancellation action filed by Birkenstock was dismissed for being moot and academic, paving the way for its own trade mark applications to be allowed. Shoe Expo, not deterred by the cancellation of its registration, filed oppositions to the trade mark applications of Birkenstock, on the grounds that it had been using the mark ‘BIRKENSTOCK’ for over 16 years in the Philippines and that it had re-applied for said trade marks, and had also obtained copyright registration for the word ‘BIRKENSTOCK’ in 1991.