ASEAN PATENT INTEGRATION EFFORT

The Association of Southeast Asian Nations Coordinating Committee on Intellectual Property Policy and Cooperation (ACIPC) launched the first regional patent cooperation program known as ASEAN Patent Examination Cooperation (ASPEC).

Commencing 15 June 2009, ASPEC will aid in expediting patent grants in the ASEAN region, as well as, improving the quality of the search and examination reports among ASEAN Intellectual Property Offices (IPO). The ASEAN member states comprise of Singapore, Combodia, Indonesia, Malaysia, the Philippines, Laos, Thailand and Vietnam.

Under ASPEC, applicants filing a patent application in more than one ASEAN IPO for the same invention can submit the examination report from the first IPO that has completed the patent examination, to other IPOs for their reference in their examination process. This saves time and resources of the other ASEAN IPOs as it is not necessary for them to begin the examination process from scratch. Thus, reducing time spent on search examinations for the corresponding patent applications.

This arrangement encourages more innovations and attracts more foreign investments into the region. ASEAN is heading in the direction of having a regional patent application such as that of the European Union.

THE "MC" WAR : MALAYSIA UPDATES

Having been familiar with McDonald's trademark, what would possibly be the first impression when "Mc" is used in conjunction with a food item? What comes to mind upon recognising a restaurant with the name McCurry? Logically, it contributes to an assumption that McCurry is in some way associated with McDonald's or somehow an extension of their current range of products and services. As such, McCurry was faced with an action filed by McDonald's on the grounds that McCurry has passed off their business as its own.

McCurry, with full knowledge of the plaintiff's proprietary rights in the goodwill and reputation of its trade and business in food and beverages, conducted under the distinctive "Mc" identifier, copied and adopted the identifier "Mc" for its own food and beverages restaurant. First instance court ruled in favour of the plaintiff, which is McDonald's based on the contention that the element of misrepresentation is immaterial.

An appeal by McCurry to the Court of Appeal brought about Judge Gopal Sri Ram's Judgement on this point. In rejection to the earlier decision, he pronounced that "nowhere do I find in it any pronouncement dispensing with the proof of the element of misrepresentation." Infact, to be liable McCurry must have misled the public and represented his business to that of McDonald's. An advantage shall be proved to have been generated from the existing goodwill or reputation attached to the goods and services in detriment to the plaintiff.

Attending to this core issue, the judge came up with a complete analysis in defence of McCurry, the defendant. Following a quick scan, a detectable salient feature would definitely be the way both parties' business is carried out.

McDonald's, being a fast food franchisor is conspicuously different from McCurry, a sole outlet offering none of the food available in McDonald's as it caters mainly of typical Indian food. Pertinent to that, McDonald's attracts customers mostly made up of children, unlike McCurry who is usually patronize by adults and senior citizens. How could it possibly be arguable that McCurry is passing off McDonald's business as its own?

Looking at the plaintiff's mark, logo or get up, it consists of a distinctive golden arched "M" with the word "McDonald's" against a red background. Whereas for the defendant, its signboard carries the words "Restoran McCurry" with the lettering in white and grey on a red background with a picture of a chicken giving a double thumbs up and with the wording "Malaysian Chicken Curry". Thus, the defendant's presentation of its business is in a style and get up which is distinctively different from that of the plaintiff.

Hence, concluding from the arguments altogether, there is no evidence to show that McCurry had a tort of passing. This eventuates in a reverse of the earlier decision by the court of appeal meanwhile allowing McCurry's appeal. McDonald's claim is thus dismissed.

Counterfeit Goods Seized In Philippines

The National Bureau of Investigation of Manila seized some 40 million peso worth of counterfeit LeSportac bags during raids conducted on a warehouse and several stalls in at least two shopping malls in Binondo, Manila last week.

Several stalls at 168 Mall and New Divisoria Mall, and a warehouse located at 501 Aclem Building on Juan Luna Street, Binondo which were reportedly owned by Chinese nationals were raided by the National Bureau of Investigation of Manila and the agents of the Intellectual Property Rights Division were able to seize 22,371 pieces of counterfeit LeSportac bags during the raids.

The complaint was filed by Didymus Business Proprietary support Services, which represented LeSportac, claiming that thousands of bags and pouches bearing the trademark of LeSportac were being sold to the public to the damage and prejudice of its client.

Armed with search warrants issued by Manila regional Trial Court, the bureau agents conducted the raids following surveillance and test-buys. Charges of violation of Republic Act 8293 (Intellectual Property Code of the Philippines) would be filed against the owners of the establishments.

Indonesia: Increase on the Official Fees and restriction of goods or services in one application for registration of a mark in one class of goods or services in Indonesia

The Government of the Republic of Indonesia has issued its new Government Regulation No.38 of 2009 in respect of non-taxes of government revenue applied at the Directorate of Law and Human Rights which is effective from 3rd June 2009 including the official fees for Patent, Trademark, Copyright and Industrial Design.

Under the new regulation, the official cost for filing trademark application has increased to US$17.5. There is also a restriction on the number of goods or services covered by one application for registration of a mark in one class of goods or services for maximum 3 (three) items of goods or services.

For application claiming more than three items of goods or services in one class, there is additional charges of US$7.5 per each goods/ services.

Vietnam: Change of The Fee for IP Filings

On 04 February 2009, the Ministry of Finance of Vietnam issued the Circular No.22/2009/TT-BTC on the fees regarding industrial property to replace the Circular No.132/TT-BTC dated 30 December 2004, which takes effect as of 21 March 2009. According, the fees for IP matters increased approximately 20% in comparison with the fees under Circular No.132/TT-BTC.

SINGAPORE UPDATES: Cheapening The Image of A Luxury Brand

City Chain Stores, a Singapore-incorporated company and a wholly-owned, indirect subsidiary of Stelux Holdings International Limited, launched a range of watches bearing the "Solvil" trademark in November 2006. Unfortunately, the series of solvil watch came with a flower device which eventually became the bone of contention before the court among Louis Vuitton and City Chain. Louis Vuitton initiated a suit on the basis that Solvil watches flower device was identical or similar to two of its registered trade marks, namely, the Flower Quatrefoil and the Flower Quatrefoil Diamond, which it had applied to its own watches since 2002 and such watches were sold in Singapore since 2004. The Trade Marks were part of the four constituent elements in the plaintiff's Monogram Canvas design ("the Monogram"), which the plaintiff applied to a majority of its products.City chain, with its solvil watches therefore was alleged to have committed an infringement of well known trademark as provided in s2(1) of Trade Marks Act as well as tort of passing.

However, in defence of the accusation, the defendant denied having passed of the plantiff's business by relying on the arguments that the Solvil flower device was not used as a trade mark on the on the Solvil watches but as a mere decorative embellishment or element. The use of the Solvil flower device was not a misrepresentation and there was no likelihood of confusion on the part of the public. Besides, not only did the defendant dispute whether is infringement, he further asserted that the plaintiff's trade mark under the Act.

Upon catering to the arguments of both parties, the court resolved each issue with convincing judgments. The deciding judge was of the opinion that trade marks might look attractive when used in a repeat pattern, especially in different sizes and colours. But multiple usage of a trade mark on one product could not bring the case out of the realm of trade mark use. What was important was whether the use was "in the course of trade" and such use could not be denied in the case of the Solvil watches.

Notwithstanding the fact that the Solvil flower device was used by the defendant in its watches in a manner which did not show the complete flower. It would be obvious to anyone looking at the pattern on the Solvil watch face and strap that the complete sign was a stylised four-pointed flower. So long as the visual image of the complete letters or device was clear, it mattered not that the complete letters or device were not displayed. Being a sign used as trade mark, infringement within the scope of s27(1) of the Act was found even though differences existed in the two designs. This is pertinent to the fact that there were obvious visual and conceptual similarities between the Solvil flower device and the plaintiff's flower quatrefoil.

With such similarities, how could it be possible to have both of the mark not confused by the public?

Confusion in terms of believing that the defendant's goods emanated from the same undertaking or were somehow linked economically to the plaintiff would take place. A customer might nevertheless think that the defendant had been licensed by the plaintiff to use the Trade Marks or that there was some collaborative marketing with Solvil being a more affordable class of LV watches. The Solvil watches with the flower quatrefoil motifs could be easily mistaken for LV ones at a glance when worn on the wrist. Evidently, misrepresentation, being one the element for the tort of passing has been demonstrated. By virtue of the misleading act, i.e. trading solvil watches which bear close resemblance to the LV watches yet retailing for a miniscule fraction of the price of the LV watches, damage to the plaintiff's brand name is very likely given that people would get put off certain luxury brands simply because there were so many fakes and cheap look-alikes in the market.

Hence, the court in this case found in favour of plantiff dismissing the criminal revision.

Swift Patent Protection

The Intellectual Property of Singapore (IPOS) and the Japan Patent Office (JPO) have recently launched a Patent Prosecution Highway (PPH) pilot. The objective of the program is to share search and examination results between the offices to expedite the grant of the corresponding patents more efficiently in both countries. Launched on 1st July 2009, the one year pilot program will aid to quicken the Singapore patent application process.

In the JPO, the average process period for a regular patent application from request to first action is about 26 months. With the PPH, it is estimated to be reduces to about 2-3 months.

The PPH will allow both IPOS and JPO to reduce the search and examination workload. As the number of patent applications worldwide are increasing, this sharing of work is beneficial.