Intellectual Property News
March 2016
We are delighted to share with you the latest edition of our newsletter covering
the latest Intellectual Property developments in Indonesia, Malaysia and
Singapore.
We trust you will find this newsletter useful. If you would like any further
information, please contact the team in your jurisdiction.
Best regards,
Baker & McKenzie.Wong & Leow (Singapore)
Hadiputranto, Hadinoto & Partners (Indonesia)
Wong & Partners (Malaysia)
Recent Developments In
Indonesia
Malaysia
Singapore
Latest News
Boost for well-known trademarks
We often see unauthorized repeated filings of trademarks that are similar to other
parties' well-known trademarks. Even though in most cases the proprietors of the
well-known trademarks successfully cancel the conflicting trademark at the
Commercial Court and get a final and binding decision, it does not necessarily
stop the conflicting party filing modified versions of the trademarks at the
Trademark Office. However, things may change for the better, at least from the
perspective of the Commercial Court.
In a recent trademark cancellation case involving the owner of a well-known mark
for shoe products against a local individual, the panel of judges at the Commercial
Court in Jakarta took a different approach in deciding in favor of the trademark
owner. The panel of judges took into consideration earlier court decisions on
previous cancellation cases between the same parties particularly to determine
the well-known status of the trademark.
The cancellation case was initiated by the owner of a well-known mark to cancel
14 conflicting trademark registrations after two previous successful cancellation
cases against the same party for similar modified trademarks. The fact that
Indonesia adopts the "first-to-file" trademark registration system and that the
Trademark Office does not have a robust trademark search mechanism in place
For more information, please
contact:
Kuala Lumpur
Chew Kherk Ying
Partner
Tel: +60 3 2298 7933
[email protected]
Singapore
Andy Leck
Managing Principal
Tel: +65 6434 2525
[email protected]
Jakarta
Daru Lukiantono
Partner
Tel: +62 21 2960 8588
[email protected]
Baker & McKenzie.Wong & Leow*
www.bakermckenzie.com/Singapore
Hadiputranto, Hadinoto & Partners*
has made it possible for trademark squatters to repeatedly file similar modified
trademarks regardless of final and binding court decisions to cancel their earlier
trademarks that have been registered in bad faith.
In rendering its decision, the panel of judges considered strong evidence that the
Plaintiff presented, in particular trademark registrations in various countries,
evidence of use indicating use prior to the registration date of the conflicting
trademarks and actual proof of public confusion over the source of the conflicting
products. Most importantly, the panel of judges relied on the previous final and
binding court decisions in determining the well-known status of the trademark.
The decision rendered by the panel of judges is quite exceptional since the panel
of judges would normally disregard previous court decisions and heavily rely on
the worldwide trademark use and registration prior to the registration of the
conflicting trademark to determine the well-known status.
This decision not only brings significant clarification for trademark owners that the
well-known status of a trademark prevents conflicting trademarks from maturing
into registration in opposition actions at the Trademark Office, but also showed
that the well-known status as declared by the Commercial Court will survive in the
Indonesian legal system where earlier jurisprudence or court decisions are not
legally binding.
The decision was rendered by the Commercial Court, which recently moved to a
new spacious and convenient premises at Kemayoran, Central Jakarta.
DARU LUKIANTONO / RAJA MADA SILALAHI
Partner / Associate
Hadiputranto, Hadinoto & Partners
Upcoming Data Privacy Law and Regulation
There is a positive development in data privacy protection in Indonesia, due to the
issuance of a draft Ministerial Regulation on Data Protection (“Draft Regulation”)
by the Ministry of Communications and Informatics of the Republic Indonesia
(“MOCI”). This Draft Regulation was prepared as one of the implementing
regulations of Law No. 11 of 2008 on Electronic Information and Transactions
("EIT Law") and Government Regulation No. 82 of 2012 on the Implementation of
Electronic Systems and Transactions ("GR 82"). In October 2015, the
Government also issued a draft Data Protection Law (“Draft Law”).
Until now, there is no confirmation on the issuance date of both Draft Regulation
and Draft Law.
In general, the Draft Law is aimed at bringing Indonesia in line with some other
jurisdictions when it comes to protecting data privacy, which should be essential
since until now, there is no law and regulation in Indonesia specifically regulating
the scope of what should be deemed as "Personal Data".
The Draft Law contains a definition of "Personal Data" which includes data of a
person's life that can be identified automatically or combined with other
information through electronic or non-electronic systems. It also specifically
regulates that all data such as religion/belief, health, physical and mental
condition, sex life and financial information is deemed as "Sensitive Personal
Data".
www.hhp.co.id
Wong & Partners*
www.wongpartners.com
* Baker & McKenzie.Wong & Leow,
Hadiputranto, Hadinoto & Partners
and Wong & Partners are member
firms of Baker & McKenzie
International in Singapore, Indonesia
and Malaysia respectively
Moreover, according to the Draft Law, Personal Data Operators are prohibited
from transferring Personal Data to other countries unless the receiving country
has personal data protection measures consistent with the Draft Law. This does
not apply if (i) there is a contract between the Personal Data Operator and the
offshore data receiver; or (ii) there is a bilateral agreement.
The Personal Data Operator must secure consent before transferring the data,
and the data receiver cannot use the Personal Data except for the use that the
data owner has consented to. The Personal Data Operator must also notify the
data owner in case of a merger, spin-off, consolidation or other business
transactions that may affect the implementation, management or transfer of
Personal Data.
Under the Draft Regulation, electronic system operators that will do cross-border
data transfers must first coordinate with the MOCI on the transfer plan and the
results of the transfer activities. Moreover, if anyone wishes to show, publish,
send, or disseminate personal data; or open the access to its electronic system to
the public, such personal data should be derived from an electronic system
dedicated for public service.
The Draft Regulation also provides time requirements for personal data storage,
which is five year at minimum, in the absence of laws regulating data storage in
relevant business sectors.
DARU LUKIANTONO / WIKU ANINDITO
Partner / Associate
Hadiputranto, Hadinoto & Partners
Back to top
Federal Court Affirms Wide Scope of Activities For Trade Mark Use
The concept of establishing trade mark use plays a central role in brand
protection. In addition to forming one of the requirements in trade mark
infringement actions, establishing trade mark use mitigates the risk of
expungement proceedings due to non-use.
In Mesuma Sports Sdn Bhd v National Sports Council Malaysia; Trade Marks
Registrar of Malaysia (Interested Party), the Federal Court of Malaysia affirmed
the Court of Appeal's wide interpretation given to "use in the course of trade" in
establishing trade mark rights.
The appellant was a company appointed to manufacture and supply sports
clothing bearing a "tiger stripes design" for the respondent, a non-profit statutory
body. The appellant registered a mark similar to the trade mark under the
Malaysian Trade Marks Act ("Act") claiming to be the first user of the trade mark
in the course of trade. At first instance, the respondent plaintiff obtained judgment
that the trademark had been registered wrongfully on the basis that it was the first
user of the trade mark. The respondent's claim was upheld by the Court of
Appeal.
The issues raised before the Federal Court centred upon the question of who can
rightfully claim to be the proprietor of the trade mark. The appellant claimed to be
the first user of the trade mark by virtue of its manufacture and distribution of
sports apparel bearing the trade mark. Although it was the creator of the trade
mark, the respondent plaintiff had not been involved in the usual commercial
activities, such as sales, pertaining to the trade mark.
In finding for the respondents, the Federal Court endorsed the wide interpretation
of "use in the course of trade" referred to in the Act. Such use includes non-profit
activity and the respondent's acts of appointing manufacturers to make and
supply sports apparel bearing the subject trade mark. As such, the respondent
was the first user of the trade mark.
The Court's decision affirms the wide interpretation adopted in respect of activities
which constitute trade mark use. In the context of trade mark protection,
companies may potentially rely on acts of appointment or engagement of a
manufacturer as evidence of "use the trade mark in the course of trade". It
appears further that any promotional or business activities undertaken prior to
actual use of the trade mark on a product may constitute sufficient "use" to stake
a claim as proprietor of a trademark.
CHEW KHERK YING / ADELINE LEW
Partner / Associate
Wong & Partners
Collecting Information and Insight not Trademark Use
In Philip Morris Brands Sarl v Rothmans Brands Sdn Bhd & Anor, the court held
that the collating information and gathering insights does not amount to 'use'
under the Trade Marks Act 1976 ("TMA").
The case is in relation to expungement of defendant's "PARLIAMENT",
"
", "
" and "
" trademarks registered for tobacco products
and smokers articles in Class 34. The Plaintiff, as an aggrieved party, has made
an application to expunge the defendant's Parliament marks on grounds that
there was no use in good faith by the defendant pursuant to section 46(1)(b) of
TMA.
The Plaintiff has established that it is an aggrieved party by virtue of its worldwide
use of the "PARLIAMENT" mark with the intention of expanding its business in
Malaysia under the same mark.
In establishing non-use, the Plaintiff relied upon investigation reports and
information obtained from the defendant's website including annual report of the
BAT Malaysia and BAT Malaysia's price list report. The judge held that these
information are sufficient to establish prima facie non-use and that there is no
requirement in law which requires Plaintiff to conduct market survey.
The first Defendant's only evidence of use of the PARLIAMENT Marks was the
launch of cigarettes bearing the "PARLIAMENT" mark in January 2008 and sales
of 8 ½ cartons. The first Defendant contends that they have made a commercial
decision to temporarily halt the sale of cigarettes bearing the "PARLIAMENT"
mark to review and revise their launch strategy. As the application to expunge
was made on 9.4.2014, the use in January 2008 is beyond the relevant statutory
period which is between 9.3.2011 to 9.3.2014.
The defendant contends that it has 'used' the "PARLIAMENT" mark during the
statutory period by way of conducting research and development to ensure the
commercial success of "PARLIAMENT" cigarettes. The judge held that 'studying
and collating information' and 'gathering insights' for purposes of revised launch
plan does not amount to 'use' of the "PARLIAMENT" mark. Section 3(2) of the
TMA and the case of Godrej Sara Lee v Siah Teong Teck & Anor (No. 2) [2008] 7
CLJ 24 provides that use of a mark must be physical use and would include
affixing the mark to goods or advertising material. In the case of Lam Soon Edible
Oil v Hup Seng Perusahaan Makanan (M) Sdn Bhd [2010] 5 CLJ 975, the judge
had similarly considered the issue of continuous development, research and
collation of information during the relevant statutory period when considering the
question of use. The judge in the present case however distinguished the present
case with that of Lam Soon as there was continuous advertising, finalisation of
packaging artwork and acquisition of raw materials of goods during the statutory
period which is absent in the present case.
The judge further held that the defendant cannot rely on the special
circumstances of non-use under section 46(4) of the TMA on the basis that the
Control of Tobacco Products Regulations prohibits tobacco advertising. The
defendant had made a commercial decision to halt sales of the cigarettes bearing
the Parliament marks for purposes of collating information and gathering insights
hence it is concluded that there is no physical use by the defendant.
The Court's decision affirms that 'use' under the TMA must be in relation to
physical use of a mark and merely collating information, conducting research and
development for commercial strategy is not sufficient to prevent expungement on
the basis of non-use.
CHEW KHERK YING / WOO WAI TENG
Partner / Associate
Wong & Partners
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Higher Burden of Proof for Invalidation proceedings?
The Court of Appeal in Global Tobacco Manufacturers v Jamal Abdulnaser
Mahmoud Al Mahamid [2015] SGCA 51 was faced with an appeal from the
decision of the Judicial Commissioner, allowing Jamal Abdulnaser Mahmoud Al
Mahamid's ("Jamal") application for the invalidation of Global Tobacco
Manufacturers (International) Sdn Bhd's ("Global Tobacco") trade mark.
Facts
Global Tobacco is a cigarette producer and is the registered proprietor of the
Manchester Mark
(the "GT Mark") in Class 34 goods and
services, which comprise cigarette and related products. Jamal is the registered
proprietor of another Manchester Mark
(the "Jamal Mark"). The Jamal
Mark was registered first, and the GT Mark was later registered without any
opposition. Jamal subsequently sought to invalidate the GT Mark which was
successful before the High Court.
Grounds of invalidation under s 8(2)(b)
Under section 8(2)(b) of the Trade Marks Act (Cap. 332) (the "TMA"), a trade
mark shall not be registered if it is similar to an earlier trade mark; is to be
registered for goods similar to those which the earlier trade mark protects; and
there exists a likelihood of confusion arising from the two similarities.
The Court of Appeal easily held that there was a high degree of similarity between
the trade marks, in light of the fact that the dominant element of both the
composite marks was the textual component, "Manchester", and that the nontextual component had limited impact in differentiating the marks. As both marks
had identical text, the court found that the marks were identical aurally and
substantially similar visually and conceptually.
In deciding whether there was a likelihood of confusion arising from the
similarities of the trade marks, the Court of Appeal reiterated the following points:
(i) the greater the degree of similarity between the goods and the marks, the
more readily a likelihood of confusion will be found; and
(ii) evidence of actual confusion is not necessary, though it is helpful in proving a
"likelihood of confusion".
Evidential Burden
Whilst the grounds which has to be satisfied under Section 8(2)(b) to successfully
invalidate a later mark was not in dispute, counsel for Global Tobacco sought to
argue that more evidence was required to discharge the burden of proving the
likelihood of confusion in the case of invalidation (occurring after the registration
of a trade mark), compared to opposition (occurring before the registration of a
trade mark).
While the Court of Appeal reiterated that evidence of actual confusion was not
necessary to discharge the burden of proving a likelihood of confusion, it declined
to reach a conclusive view on whether more evidence was required to prove the
likelihood of confusion in invalidation cases compared to opposition cases.
In any case, as there was a high degree of similarity between the marks and the
goods were identical, the Court was convinced that there was a sufficient
likelihood of confusion. The registration was thus in breach of s 8(2)(b) of the TMA
and would be invalidated under s 23(3)(a)(i) of the Act.
Comments
Whilst the grounds of the Court of Appeal's decision are fairly uncontroversial, the
case has brought to light the issue of whether a higher burden of proof is required
to establish likelihood of confusion in a claim to invalidate an existing trade mark,
in comparison to opposing a trade mark to be registered. What is interesting is the
Court of Appeal's reluctance to come to a conclusive view on this issue and
deciding instead based on the high degree of similarity between the two marks in
question. It thus remains to be seen whether this point will be clarified in
subsequent cases before the Court.
Cheah Yew Kuin
Local Principal
Baker & McKenzie.Wong & Leow
Court orders blocking of piracy site under new site-blocking framework
On 11 February, 2016 the High Court ordered Network Service Providers ("NSP")
Singtel, Starhub, M1, MyRepublic and ViewQuest to block piracy site
Solarmovie.ph by March 17 2016. Solarmovie features links to the latest
Hollywood movies and TV shows. The order was made pursuant to an
application by the Motion Picture of America's (MPA) member studios under new
site-blocking provisions in the Copyright Act.
New site-blocking framework
The new site-blocking framework under the Copyright Act came into force in
December 2014. It provides for a process by which the copyright owners,
exclusive licensees and performers can obtain "blocking orders" against flagrantly
infringing websites without having to first establish an NSP's liability for copyright
infringement.
Under the new framework, the plaintiff must prove that :
a) the NSP's services have been or are being used to access the subject
online location to commit or facilitate infringement of the Plaintiff's
copyrighted material; and
b) the website is a "flagrantly infringing" online location.
In assessing whether a website is "flagrantly infringing", the Court will consider a
number of non-exhaustive factors listed in sections 193DDA and 252CDA of the
Copyright Act. They include whether the primary purpose of the website is to
commit or facilitate copyright infringement; whether it makes available or contains
directories, indexes or categories of means to commit or facilitate copyright
infringement; whether the owner or operator of the online location demonstrates a
disregard for copyright generally; whether the online location contains guides or
instructions to circumvent protection measures implemented to restrict copyright
infringement; whether other jurisdictions have made similar blocking orders
against the website; and the volume of traffic at or frequency of access to the
online location. The framework's intention is to target websites which blatantly
disregard copyright and not those which primarily offer legitimate materials such
as YouTube and cloud storage services.
The new no-fault framework is intended to provide a more efficient mechanism for
rights holders to address the issue of piracy sites. The previous framework
required rights holders to sue an NSP for copyright infringement if it refused to
comply with take-down requests. It was largely unutilized due to the high cost
and uncertainties associated with establishing an NSP's liability for copyright
infringement.
Notification requirements
Before making an application for a court order, rights owners will be required to
send cease and desist letters to the owners of the websites intended to be
blocked and also notify NSPs of their intentions. They are also required to notify
such website owners of the applications which have been made and serve a copy
of such application on affected NSPs. This is to afford affected parties an
opportunity to challenge the application. However, cognizant of the difficulties
involved in tracking down website owners, the Court is empowered to dispense
with owner notification requirements if it is satisfied that reasonable efforts have
been made to determine their identity and address.
Comments
The granting of the site blocking order against Solarmovie and the short time
frame taken for the order to be made (about 2 months) will likely encourage more
rights holders to seek this remedy. As we know, such offending websites can
migrate between domain names with relative ease. So the effectiveness of the
new framework in addressing online piracy remains to be seen. The challenge will
be whether the present framework is flexible enough to allow rights owners to
overcome migration and avoidance techniques which the offending websites are
likely to adopt.
ANDY LECK / CHEAH YEW KUIN
Managing Principal / Local Principal
Baker & McKenzie.Wong & Leow
Back to top
Ranked Tier 1 for Intellectual Property
in Singapore, Indonesia and Malaysia
by the Chambers Asia Pacific
We would also like to take this opportunity to announce our recent success at the
Chambers Asia Pacific 2016 rankings. Baker & McKenzie.Wong & Leow,
Hadiputranto, Hadinoto & Partners and Wong & Partners were ranked in Band 1
for Intellectual Property in Singapore, Indonesia and Malaysia respectively. Andy
Leck, Angeline Lee, Daru Lukiantono, Chew Kherk Ying and Brian Law were
also recognised as "Leading Individuals" for Intellectual Property in their
respective jurisdictions. The full online rankings and editorial comments are
available here.
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