Intellectual Property Law Firm in Asia
Mirandah Asia
JL. Jend. Sudirman Kav. 76-78
Jakarta 12910
Indonesia
Other Offices: Kuala Lumpur Manila Singapore Bangkok Hanoi
Mirandah Asia Overview
Mirandah Asia is a full service, boutique intellectual property law firm with its main offices in Singapore and Malaysia. Practice areas include patents, trademarks, copyright, industrial design, litigation support, investigation and watch service, enforcement action, infringement advice, licensing, franchising, entertainment and media, portfolio management, dispute resolution, privacy and trade secrets, regulatory approvals for food and drugs, due diligence, domain names, intellectual property consultancy and management, integrated circuits, geographical indications, freedom to operate, e-commerce, consumer protection, and advertising clearance.Established in 1986, the firm has extended its network of offices in Asia to also include Jakarta, Indonesia; Bangkok, Thailand; Manila, Philippines; and Hanoi, Vietnam, coordinating and serving clients’ intellectual property needs in these and other ASEAN countries including Cambodia, Laos, Myanmar, and the Indian sub-continent countries of Nepal, Bangladesh, Pakistan, and Sri Lanka.
Mirandah Asia's goal is to deliver exceptional service, supported by its knowledgeable and trained staff, coupled with modern and sophisticated IT systems. Working together, its people and technology provide international class service to all clients.
Year this Office was Established: 1986
Languages: English, Bahasa Indonesia, Mandarin, Japanese.
Mirandah Asia Areas of Law
Additional Areas of Law: Designs; IP Enforcement Support; Patent Litigation Support; Trademark Litigation Support; Freedom to Operate; Licensing and Franchising; Regulatory Approval for Food, Drugs and Health Products; Advertising, Media & Entertainment; Promotions, Sweepstakes, Sports, Gaming, Gambling; Consumer Protection; Trade Secrets & Confidential Information; Domain Names; Geographical Indications.
Mirandah Asia Areas of Law Description
- Patent
A patent is a monopoly awarded to the owner of a new and previously undisclosed invention. It has a life span of about 20 years, and affords the owner the right to exclude others from making, using or selling the invention without permission.
- Trademarks
A Trademark is used to indicate the origin of the goods and services and to distinguish the goods and services of one trader from those of another.
- Copyright
Copyright is a set of exclusive rights over use of a particular expression of an idea or information and this may subsist in a wide range of creative, intellectual, or artistic forms that include literary, musical, choreographic, artistic and even print and broadcast media copyrights.
- Industrial Design
Mirandah Asia regards Industrial Design as the ornamental aspect of useful objects.
- Franchising
Mirandah Asia understands Franchising as a method of conducting business wherein tried and proven methods of doing business is disclosed to a franchisee in exchange for recurring annual fees or payment which usually are a percentage value from gross sales or gross profits.
- Intellectual Property Litigation
Mirandah Asia views an approach on dispute resolution as being pragmatic with business-oriented objectives.
- Investigation and Watch Service
Intellectual Property protection includes calculated anticipation of infringing actions by other entities against protected rights.
- Enforcement Action
Intellectual Property rights protection is as critical as obtaining rights over Intellectual Property.
- Infringement Advice
Infringement refers to the violation of a law or Intellectual Property right of an individual or entity company, including infringement in patent, trademark and copyright.
- Licensing
Mirandah Asia can help you manage the use of Intellectual Property rights such as Patents, Trademarks, Copyright and Industrial Designs.
- Due Diligence
Mirandah Asia offers its Intellectual Property Audit services to major multinational and listed companies that consider Intellectual Property to be their topmost priority asset, having developed various audit methodologies, tailor-made for our clients' businesses.
- Domain Names
Domain Names allow Internet users to more easily find and communicate with internationally accessible web sites and other internationally networked and server-based services.
- E-Commerce
E-Commerce consists of primarily the distributing, buying, selling, marketing and servicing of products or services over electronic systems such as the Internet and other computer networks.
- Dispute Resolution
Dispute Resolution is a process requiring professional skilled intervention which includes mediation, conciliation, or negotiation between parties with the objective of attempting to reach a mutual, consensual agreement on a contentious issue.
Lawyers
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Ms. Maulitta Pramulasari
Lawyer Intellectual Property, Patents, Trademark |
Mirandah Asia Affiliations
- International Trademark Association (INTA)
- The Chartered Institute of Patent Attorneys (CIPA)
- Intellectual Property Owner Association (IPO)
- The Chartered Institute of Trade Mark Agents (CITMA)
More Information on Mirandah Asia
Patents Lawyers in IndonesiaIndonesia Copyright Law Firm
Trademarks Lawyers in Indonesia
Indonesia Designs Law Firm
IP Enforcement Support Lawyer in Indonesia
Indonesia Patent Litigation Support
Trademark Litigation Support in Indonesia
Mirandah Asia News and Publications
Articles Published by Mirandah Asia
Tiger Pictures Entertainment Ltd v. Encore Films Pte Ltd: In Singapore, an Expedited Process in the Interest of Justice?
A recent High Court judgment was the first of its kind that concerned the “simplified process” for intellectual property claims in Singapore. The simplified process took effect in Singapore from April 1, 2022. It is a discretionary, streamlined process to expedite the management of intellectual property disputes to enable disputants (particularly SMEs) to save costs and time when invoking their rights.
Read ArticleASEAN: Emerging Trends in Southeast Asia’s Autonomous Vehicle Patent Landscape
According to data by the World Intellectual Property Organization (WIPO) and the World Bank, there has been an unprecedented interest in Southeast Asia as a patent filing destination, with the percentage of applicants filing in the ASEAN member states increasing each year. However, the autonomous vehicle (AV) technology patent landscape in this region remains nascent, as detailed by a report from the TalTech Journal of European Studies (TJES). This infancy stage primarily results from the slow legislative development that has not kept pace with AV technology.
Read ArticlePatent-Related Strategies for Start-Ups and Small Businesses in Singapore
In the current fast-paced and competitive landscape of Singapore's business environment, intellectual property (IP) protection could contribute to the success and growth of start-ups and small businesses. In particular, patents offer significant advantages by safeguarding novel inventions, processes, and technologies. This article explores patent-related strategies for start-ups and small businesses towards protecting their innovations and enhancing their competitive edge.
Read ArticleMedical Device Management in Vietnam
Vietnam’s medical device management is overseen by the Ministry of Health (MOH) and its subordinate agency, the Department of Medical Equipment and Construction (DMEC). The DMEC is responsible for regulating and controlling medical devices in Vietnam to ensure their safety, quality, and efficacy.
Read ArticleSingapore: Substantiation of Allegation of Bad Faith May Entitle Tribunal to Declare a Trademark Invalid
Swiss Company Vetements Group AG (the “Applicant”) sought to invalidate the following mark "VETEMENTS" which had been registered in Singapore by a Chinese Company, Xiamen Vetements Brand Management Co., Ltd (the “Registered Proprietor”) for clothing in Class 25.
Read ArticleSingapore: Owner of ‘Parmigiano Reggiano’ GI Wins Litigation Over Parmesan Translation
Fonterra (the appellant) filed a request with the Intellectual Property Office of Singapore (IPOS) to qualify the scope of protection of the geographical indication (GI) “Parmigiano Reggiano,” arguing that the word “Parmesan” was not a translation of “Parmigiano Reggiano.”
Read ArticleIndia: GI Status for Ant Chutney?
Mayurbhanj district in the state of Odisha in eastern India is well known for its ‘kai (red weaver ant) chutney’ and may, soon, attain the much-awaited geographical indication (‘GI’) status. The ants are abundantly available in Mayurbhanj district and has been consumed in the form of a chutney or soup, by mixing them with spicy ingredients.
Read ArticleMyanmar – Update in Trademark Law
Following updates to the Myanmar Trademark law in 2019, a soft opening to implement the updates in the law and the new electronic filing system commenced on 1 October 2020, which was expected to last for a period of 6 months until the Grand Opening.
Read ArticleIs a ‘Graphical User Interface’ Registrable as a ‘Design’ in India?
The Calcutta High Court, in a recent ruling, quashed an order which was issued by the Assistant Controller of Patents and Designs in which a design application for a ‘touch screen’ for a novel surface ornamentation which is a Graphical User Interface (‘GUI’) was refused.
Read ArticleSingapore: Fair Isaac Corporation v. Lac Co., Ltd [2022] Sgipos 19
What happens when a later trademark incorporates an earlier one, especially when many other trademarks on the register incorporate the earlier trademark? This decision explores the applicable principles surrounding trademark oppositions involving such facts.
Read ArticleIndia - Court Directs IPO to Issue Reasoned Decisions
Lack of proper reasoning in patent decisions by the Indian Patent Office (‘IPO‘) has been a cause for grave concern.
Read ArticleSingapore: Opposition Fails Due to Lack of Evidence of Bad Faith
This decision, which was published on January 26, 2023, shows that to cross the high threshold of proving a claim in bad faith, an opponent must properly substantiate its arguments.
Read ArticleIndia: Permissibility of Patent Claim Amendments
In what can be considered a watershed moment, the High Court of Delhi in Allergan Inc. v. The Controller of Patents, 2023/DHC/515, quashed and set aside an order of the latter (in which the Controller had refused to allow the amendments to the claims which the Appellant had sought), and remanded the matter back to the Controller for consideration of patentability of the invention afresh, whilst allowing the said claim amendments.
Read ArticleIndia: Simplicity Does Not Defeat an Invention
Novelty and inventive step are the essential requirements for the grant of a patent . In an interesting development, the High Court of Delhi, in Avery Dennison Corporation v. Controller of Patents and Designs, CA. 29/2021, has reiterated that the simplicity of an invention should not deter the grant of a patent.
Read ArticleSingapore: Visual Similarity Wins High Court Judgment for Twitter
This decision from the High Court in Singapore, issued on November 23, 2022, illustrates the delicate balance a tribunal must undertake when assessing the similarity between two device marks. The High Court in Singapore set out the proper approach to understanding and applying the concepts of distinctiveness, and visual and conceptual similarity.
Read ArticleThai PDPC’s Notification & Guidelines on Data Breaches
The Notification on the Criteria and Procedures for Handling Personal Data Breaches (the "Notification") was issued by the Personal Data Protection Committee (“PDPC”) of Thailand and enacted on December 15, 2022. The notification included a breach assessment guideline and breach notification version 1.0 for data controllers and data processors to assess the level of risk in data breaches.
Read ArticleSingapore: Swatch AG v. Apple Inc.
This decision serves as a reminder that when opposing a trademark on bad faith, opponents and their lawyers should remain disciplined in crafting pleadings and submissions.
Read ArticleIndonesia: Launch of Automatic Approval of TM Renewal
The Automatic Approval for Trademark Renewal (“POP Merek”) was launched by the Directorate General of Intellectual Property (DGIP) on 30 October 2022.
Read ArticleNestle Trademark in Singapore: No Use Crying Over Spilled Milk
This decision recaps and applies the case law surrounding the marks-similarity enquiry. A2 filed a consolidated opposition against Nestlé’s trademarks (Trademark Application No. 40201926155W) and (Trademark Application No. 40201907176S) (collectively, the Application Marks), relying on A2’s own registered trademarks for . A2 unsuccessfully argued that a likelihood of confusion would arise between A2’s trademarks and the Application Marks, and that Nestlé was liable for passing off.
Read ArticlePhilippines: Revision in Patent Rules
The Intellectual Property Office of the Philippines (IPOPHL) issued a Memorandum Circular No. 2022-016 on “Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Designs of 2022” (IRR’2022) which took effect from 20 September 2022.
Read ArticleTata Sons Loses Trademark Challenge in Singapore for Lack of Confusion
When the proprietor of an earlier trademark has established goodwill in a different industry from a competing trademark, it is less likely that confusion can be established under the Trade Marks Act, that is, that using a newer trademark would indicate a connection between the applicant’s goods and services and those of the earlier mark’s proprietor. A trademark is “well-known” if the average consumer, rather than the average Singaporean, in the relevant market would recognise it.
Read ArticleSingapore: Registrar Is Unconvinced by Similarity and Bad-Faith Allegations
This decision shows that a high threshold of proof is required to be successful in trademark similarity and bad-faith allegations. Despite two competing marks sharing the same word, stylistic and emphatic differences can render them dissimilar. Even in those circumstances, sufficient distinction between those marks remains commercially acceptable and can rebut an allegation of bad faith.
Read ArticleAlcohol Advertisement Restrictions in Thailand
The Alcoholic Beverage Control Act, B.E. 2551 (“the ABCA”) poses challenges for manufacturers and content creators producing alcohol advertisement projects in Thailand. The ABCA aims to reduce alcohol-related problems by controlling the sale and advertisement of alcoholic beverages, and punishing non-compliance by means of heavy fines and penalties including imprisonment.
Read ArticleSingapore: Importance of the Use of a Registered Mark in a Revocation Action
In Singapore, a registered trademark may be susceptible to cancellation if it has not been used within five years from completion of registration, or if such use has been suspended for a continuous period of five years or more. The following case is a reminder.
Read ArticleThailand’s New Customs Recordation Procedures - Inspection Request on a Case-By-Case Basis
In this last instalment on Thailand’s new customs recordation procedures, please note that addition to the general customs recordation, an Inspection Request may also be filed on a case-by-case basis should the trademark and copyright owners (“IP owners”) suspect any importing, exporting, or transiting goods to be infringing their IP rights. Upon verification of the Inspection Request together with its supporting documents, IP owners will be given an opportunity to inspect the goods within 24 hours.
Read ArticleSingapore: Examiner Rejects “Party Like Gatsby” Mark for Lack of Distinctiveness
Slogans are useful tools in brand advertisements. However, as they often consist of ordinary words and phrases which are laudatory in nature, slogans generally do not meet the distinctiveness requirement for purposes of trademark registration in the absence of evidence of use. The following recent case reminds us of this.
Read ArticleNew Regulatory Authority Created to Regulate and Oversee Gambling in Singapore
Newly enacted legislations in Singapore have established a single regulatory authority for all forms of gambling, and have updated gambling regulations to protect the country from potentially harmful emerging trends.
Read ArticleSingapore: Dispute Over Trademark Rights to Famous “Eng’s” Noodle Shop Decided in Favour of Late Founder’s Heirs
A June 2022 decision by the Intellectual Property Office of Singapore (IPOS) provided a first instance ruling for a trademark dispute pertaining to the name of a famous noodle shop in Singapore. The IPOS adjudicator ruled that the late noodle shop operator’s children had a right to register trademarks pertaining to the name of their father’s noodle shop, despite opposition from the late operator’s former business partners.
Read ArticleSingapore: Founding Family Keep Trademark Rights to ENG’s Famous Noodle Shop
The Intellectual Property Office of Singapore decided in June 2022 that a deceased noodle shop operator’s children can register trademarks relating to their late father’s shop, in the face of opposition from their father’s former business partner.
Read ArticleThailand’s New Customs Recordation Procedures for Trademark and Copyright - Requirements
Further to our recent post on the reversal of administration of customs recordal to the Royal Thai Customs Department (“Customs”), trademark and copyright owners (“IP owners”) who wish to file customs recordation should take note of the following requirements:
Read ArticleThailand’s New Customs Recordation Procedures for Trademark and Copyright
Customs recordation has always been an important border protection measure that Intellectual Property (IP) owners can employ for enforcement purposes in Thailand.
Read ArticleBeer Producer Trademark: Sociedad Anonima Damm v. Hijos De Rivera, S.A. [2022] SGIPOS 6
The Applicant, Hijos de Rivera, S.A. and the Opponent, Sociedad Anonima Damm are beer producers based in Spain. Both parties co-exist in Spain, Europe and UK, but as they grew beyond those territories they began to get embroiled in disputes.
Read ArticleSingapore: IPOS Extended the SG IP Fast Track Programme for Another 2 Years From 30 April 2022
The Intellectual Property Office of Singapore (IPOS) has recently extended their existing examination acceleration programme for patents, SG IP Fast Track Programme, for another 2 years from 30 April 2022 until 30 April 2024, to give enterprises a competitive advantage as Singapore and the world reopen from the Covid-19 pandemic. Concurrently, however, IPOS has terminated the 12 months File-to-Grant Programme (“12 MG Programme”), another examination acceleration programme of IPOS, starting from 30 April 2022.
Read ArticleThailand: Adjustment of Minimum Market Value or Damages in Intellectual Property (IP) Infringement Cases
Since its establishment in October 2002, the DSI has been crucial in combating IP infringements in Thailand.
Read ArticleTwitter, Inc. v. V V Technology Pte Ltd [2022] SGIPOS 4
A recent decision shows the importance of consumer perception of economic linkages to the likelihood of confusion inquiry. VV Technology Pte Ltd (the applicant) had already registered its mark for goods and services under other classes that overlapped with the opponent’s mark. The applicant then sought to register its mark under Class 42 for several services linked to computer and information technology. Twitter, Inc. (the opponent) opposed the application mark based on its earlier registration for a number of goods and services under Class 9, 35, 38, 41, 42 and 45. The opponent invoked Section 8(2)(b) and 8(7)(a) of the Trade Marks Act (Cap. 332, as revised).
Read ArticleSingapore: Registrar Rejects Daimler’s Similarity and Passing-Off Claims
In a decision of February 9, 2022, Daimler AG (opponent) failed in its opposition action against Vivo Mobile Communication Co., Ltd (applicant) on grounds of similarity and passing off. The opponent lost principally due to a lack of evidence of use of its mark as registered and, thereby, lack of goodwill in its mark. This reminds trademark owners yet again that they should consider how they intend to use a mark before registering it.
Read ArticleAmendments to The Rules and Regulation on Inter Partes Proceedings in The Philippines
The Intellectual Property Office of the Philippines (IPOPHL) issued a Memorandum Circular No. 2022-013 on “Amendments to the Rules and Regulations on Inter Partes Proceedings” on 27 May 2022, which took effect on 30 June 2022. These amendments are in response to challenges posed by the Covid-19 pandemic, to ensure the continuity of operations and the delivery of services by the IPOPHL, and also to benefit the stakeholders, in terms of accessibility of services, resiliency, and cost efficiency.
Read ArticleMedical Use Claims in Asean Countries
Singapore Under Section 16 of the Singapore Patents Act, “an invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not taken to be capable of industrial application.” However, first and second medical use claims are allowable in Singapore.
Read ArticleBreach of the Protection Obligation by Trinity Christian Centre in Singapore
A recent decision highlights the need to implement reasonable security measures in database servers to safeguard against personal data breaches.
Read ArticleAmendments to Patents Law in Malaysia
The Malaysia Patent Office recently announced amendments to the Patents Act and Regulations, taking effect from 18 March 2022. Highlights of the key amendments are set out as follows:
Read ArticleSingapore: Daimler Ag v. Vivo Mobile Communication Co., Ltd.
The case concerns an opposition in Singapore by Daimler AG (the opponent) to a trademark application by Viva Mobile Communication Co. (the applicant) to register (the application mark). The opponent had opposed the application on two grounds: namely, Sections 8(2) (b) and 8(7)(a) of the Trade Marks Act (Cap 332, 2020 Rev Ed) (the act).
Read ArticleSingapore: Revision in IPPractice and Official Fees From April 29, 2022
The Intellectual Property Office of Singapore (IPOS) has announced certain changes to IP practices, as well as a general increase in official fees. The pertinent changes, which will take effect from April 29, 2022, are highlighted below:
Read ArticleVietnam: Changes to Patent Examination Guidelines Concerning Computer Effective April 2022
Computer programs are generally known as a set of instructions expressed in the form of source codes, and when being executed by a computer device, are capable of performing a task or achieving a result. In Vietnam, computer programs are recognized as literary works and are protected under the copyright regime. Therefore, computer programs are excluded from being considered as an eligible subject matter for patent protection according to Article 59.2 of the Vietnam IP Law (hereinafter referred as “IP Law”).
Read ArticleSingapore Red Cross Society’s Remedial Measures to Address Data Breaches
The following case reiterates the need for a proper password protection policy and periodic security checks to guard against data breaches under Singapore’s Personal Data Protection Act (“the Act).
Read ArticleSingapore: S. C. Johnson & Son Fails to Invalidate Trademark "Similarity" of Off-White LLC
An application by S. C. Johnson & Son, Inc. (applicant) to invalidate Off-White LLC’s (the proprietor’s) registered trademark on the grounds of similarity, well-known mark status, and passing off was adjudged to fail by the IP adjudicator in his decision, rendered on December 15, 2021.
Read ArticleThailand’s New Trademark Examination Guideline 2022
The Department of Intellectual Property in Thailand has issued the final version of the Trademark Examination Guideline (“TM Guideline”) on 17th January 2022 which applies to all pending and new trademark applications.
Read ArticleSingapore Patent Office Accepts International Applications Filed in Chinese
The Intellectual Property Office of Singapore (“IPOS”), in its capacity as a receiving Office, International Search Authority (“ISA”), and International Preliminary Examination Authority (“IPEA”) under the Patent Cooperation Treaty, accepts international applications filed in the Chinese language.
Read ArticleTrademarks in Singapore: Use It or Lose It
A recent decision by the Intellectual Property Office of Singapore issued on September 22, 2021, shed light on the use of a registered trademark, as well as the ways in which a trademark owner can depend on its consent to a separate third party’s use of its trademark to prove genuine use.
Read ArticleSingapore: Monster Energy Co.'s Trademark Opposition of Hong Kong Limited's "Noisy Beast"
A recent opposition by Monster Energy Company (the opponent) against a trademark application filed by Health and Happiness (H&H) Hong Kong Limited (the applicant) is one of the very rare instances whereby the opponent relied on its earlier trademarks for goods to oppose an application for services.
Read ArticleSAP Asia Ordered to Pay Financial Penalty Having Failed to Protect Personal Data of Its Former Employees
A decision of the Personal Data Protection Commission (“PDPC”) demonstrates the importance of conveying specific business requirements clearly to external vendors and conducting preliminary testing of any supplied products before use, lest an organisation be held in breach of its data protection obligations under the Personal Data Protection Act (“the Act”).
Read ArticleSingapore: Quotation and Service Comparison Portal Ordered to Pay Financial Penalty and Issued Direction to Comply
A recent decision of the Personal Data Protection Commission (“PDPC”) demonstrates the importance of implementing internal data protection measures to comply with the Personal Data Protection Act (“the Act”).
Read ArticleSingapore: Tuition Agency Fined for Breach of Personal Data
Champion Tutor Inc. is a tuition agency with more than 10 years of experience in matching students with tutors in Singapore through its online marketplace website. It was fined SGD 10,000 for breach of its personal data protection obligations. This is its second fine in two years over its breach of its personal data protection obligations.
Read ArticleBakery Worked With Singapore's Personal Data Protection Commission to Investigate Breach
On 21 September 2021, the Personal Data Protection Commission (“the Commission”) fined Seriously Keto Pte. Ltd. (“Seriously Keto”) a penalty of $8,000 over its breach of its personal data protection obligations under the Personal Data Protection (“PDPA”). In particular, the Commission found that Seriously Keto had failed to implement appropriate security measures in order to prevent unauthorised access to personal data on its platform.
Read ArticlePersonal Data Protection Commission Allowing Fine to Be Paid in Installments in Singapore
The Personal Data Protection Commission (“the Commission”) fined Sendtech Pte. Ltd. (“Sendtech”) a penalty of $9,000 through 12 installments following a finding that it had breached its obligations under the Personal Data Protection Act 2021.
Read ArticleSingapore: Online Marketplace Vindicated From Cyberattack
On 14 May 2021, Carousell Pte. Ltd. (“Carousell”) informed the Personal Data Protection Commission (“the Commission”)about an incident of unauthorized access to its users’ accounts due to a “credential stuffing” attack. Credential stuffing refers to a type of cyberattack where a cybercriminal accesses user accounts from one organisation using the usernames and passwords stolen from another organisation.
Read ArticleSingapore: Well-Known Software & Technology Company Fined for Erroneous Disclosure of Payroll Information
In its decision dated 30th July 2021, the Personal Data Protection Commission (“the PDPC”) has fined well-known software and technology company, SAP Asia Pte. Ltd. (“SAP”) $13,500 over its breach of its personal data protection obligations under Section 24 of the Personal Data Protection Act (“PDPA”). The Decision follows a complaint received by the PDPC on 1st April 2020. that SAP had erroneously disclosed the payroll information of some of its former employees to several unintended recipients.
Read ArticleSingapore: Sporting Goods Company Issued Warning for Data Protection Breach
The Personal Data Protection Commission (“the Commission”) issued a Warning to Specialized Asia Pacific Pte. Ltd. (“SAP”) for breach its personal data protection obligations under Section 24 of the Personal Data Protection Act (“PDPA”).
Read ArticleSingapore-Registered Design Subsidiary Amendments
Published by the Intellectual Property of Singapore (IPOS) on September 10, 2021, amendments have been made on the Registered Designs Rules ("RD Rules") and the Registered Designs (International Registration) Rules ("RD(IR) Rules"), which took effect from October 1, 2021.
Read ArticleSingapore: Distinctive Elements Play Key Role in Distinguishing Marks
The recent case involving “Dr. Wolff’s Vagisan” illustrates the importance of distinguishing a mark from similar, existing marks by adding distinctive elements in the mark applied for. The parties, Dr. August Wolff GmbH & Co. KG Arzneimittel (the applicant) and Combe International Ltd (the opponent) had been engaged in a prior invalidation proceeding.
Read ArticleUpdates on Singapore Patent Practice
Following a series of public consultation and discussions, the Intellectual Property Office of Singapore (IPOS) has confirmed that they will launch a formal procedure for the submission of “third party observations” under which members of the public will be able notify IPOS of information that might be of relevance to the patentability of an invention during the examination stage of a pending patent application. Further, IPOS has also launched a further scheme where members of the public may request for the re-examination of a patent that has already been granted.
Read ArticleNippon Paint (Singapore) Co. Pte. Ltd., and Opposition Thereto by Warrior Pte. Ltd.
These opposition proceedings relate to a dispute on the trademarks between an established supplier of adhesive products for industrial purposes (Nippon Paint (Singapore) Co. Pte. Ltd., or the applicant) and a relatively new entrant into the market (known as Warrior Pte. Ltd., or the opponent). The opponent is a Singaporean company which specializes in developing unique waterproofing products and systems aimed to help solve leakage and seepage problems encountered by building contractors. The applicant, however, is the main Singapore distributor and an affiliate of well-known Japanese paint and paint products manufacturing company, Nippon Paint Holdings Co., Ltd.
Read ArticleSingapore: Model Numbers as Trademarks Remain Just That
The following decision concerns the use of model numbers as trademarks and the strength of such trademarks. Nippon Paint (Singapore) Co. Pte. Ltd (the applicant) applied to register NW1 under trademark No. 40201909725V in International Class 1. Warrior Pte Ltd (the opponent) opposed the application on September 12, 2019, relying on its earlier registered marks, W-1 with rectangular device (Opponent Mark 1) and W-1 CEMENT STRENGTHENER (Opponent Mark 2). Warrior Pte Ltd. v. Nippon Paint (Singapore) Co. Pte Ltd.
Read ArticleIndia: The IPAB Signs Off, as the President Signs on the Tribunals Reforms Bill, 2021
On 4th April 2021, the Honourable President of India announced The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 (the ‘Ordinance’). Pursuant to the Ordinance, the Intellectual Property Appellate Board (‘IPAB’) would be abolished.
Read ArticleKey Changes in Singapore’s New Copyright Bill
The Second Reading of Singapore’s new Copyright Bill (“Draft Bill”) has been tabled for September 2021. The Draft Bill is set to replace the current Copyright Act (Cap. 60, Rev. Ed. 2006), which has been in force for fifteen years. In particular, it appears that the Draft Bill allows for stronger copyright protection for creators/performers of copyright works.
Read ArticleTrademark Infringement E-Complaint Feature by Registry in Indonesia
Most cases of Indonesian trademark infringement matters are filed through a direct formal complaint to the National Police Unit. Not many cases are filed through Directorate General of Intellectual Property (“DGIP”) even though such a mechanism is allowed under the Trademark Law No. 20 of 2016. Specifically, Article 99 in Chapter XVII of Trademark Law No. 20 of 2016 states that “Aside from the investigator officers of State National Police of the Republic of Indonesia, specific civil servant investigator within the ministry administering government affairs in the legal field are authorized as investigators as referred to in the Law on criminal procedures to conduct investigation in Mark criminal acts”.
Read ArticleFavipiravir: Patent Rejection in Thailand
Favipiravir (or T-705; 6-fluoro-3-hydroxy-2-pyrazinecarboxamide) is a broad-spectrum antiviral drug used in the treatment of multiple diseases, and is the first drug approved by countries around the world as an emergency option for Covid-19 cases. Thailand’s Department of Intellectual Property (DIP) has since rejected a Thai patent application filed under the compulsory license system for a specific formulation Favipiravir in tablet form.
Read ArticleVietnam: Circular No. 6959/tb-SHTT to Temporarily Ease Stringent Signatory Requirement for Patent Applications
The Intellectual Property Office of Vietnam (NOIP) has released a new circular, Circular No. 6959/TB-SHTT (“Circular 6959”) in order to temporarily ease the strict requirements in relation to the signatory requirements of the formal documents in relation to patent applications such as powers of attorney, deeds of assignment, etc. submitted to the NOIP previously imposed by Circular No. 13822/TB-SHTT (“Circular 13822”).
Read ArticleDivisional Applications of Patents in India: Clarification and Summary
In India, every patent application should form a “single invention concept” (and therefore amount to “one invention”). However, where a parent application contains multiple group of inventions and they do not form such a “single invention concept”, a divisional application is taken up. These applications are governed by several provisions, namely Sections 16, 10(5) and 7(1) of the Patents Act 1970.
Read ArticleSingapore: TAFEP Was Fined $29,000 Over Data Breach
The Tripartite Alliance Limited (TAL), an organisation that oversees the Tripartite Alliance for Fair and Progressive Employment Practices (TAFEP), was fined $29,000 for data breach due to an incident of data hacked and accessed in 2020.
Read ArticleA Sea Change in Singapore’s Data Privacy Law
Singapore’s Personal Data Protection (Amendment) Bill 2020 was passed on November 2, 2020, following extensive public consultations between 2017 and 2020, and came into effect on February 1, 2021. The amendments to the PDPA bring about much-needed updates to align Singapore’s data privacy regime with international standards and best practices.
Read ArticleIndia: Registering ‘N95’ as a Trade Mark to ‘Mask’ Malafide Intent?
Due to the COVID-19 pandemic, the use of N95 masks has proliferated exponentially. Research scientists from the Indian Space Research Organisation (ISRO) carried out studies and found the N95 masks to be the most effective at reducing the horizontal spread of infectious diseases, including COVID-19. Indeed, the term N95 has now become commonplace. In that context, the following interesting case (Sassoon Fab International Pvt. Ltd. v Sanjay Garg) came up for consideration before the Intellectual Property Appellate Board (IPAB).
Read ArticleThailand: What to Expect When The Personal Data Protection Act B.e. 2562 Is Fully Enforced in June 2022
Incidents of unauthorized disclosure of personal information to third parties has raised concern over personal data security across the globe. In 2015, the General Data Protection Regulation (“GDPR”) was published, being the first personal data protection law passed to protect all European Union citizens. To comply with international standards, Thailand has adopted the provisions of the GDPR and introduced the Personal Data Protection Act B.E. 2562 (“PDPA”) on 27 May 2019, which was partially enacted on 28 May 2019, with a transitional period of one year. The Thai cabinet had further postponed the full enforcement of the PDPA until 1 June 2021 due to the pandemic. However, on May 8 2021, a royal decree was issued to extend the full enforcement to June 1 2022 instead.
Read ArticleSingapore: Late Filing of Evidence in a Trademark Opposition Proceeding, Pardoned!
This matter pertains to registration of the mark “BEABA” at the Intellectual Property Office of Singapore (IPOS) filed under No. 40201909817Y in the name Biba (Zhejiang) Nursing Products Co., Ltd. (the applicant), and an opposition thereto by BEABA (the opponent). The issue surrounds a late request for an extension of time to file evidence by the opponent.
Read ArticleMalaysia: The Own Name Doctrine and the Court’s Power to Make Declarations of Non-Infringement
In Diesel S.P.A. v. Bontton Sdn Bhd [2020] MLJU 715, the Malaysian Court of Appeal was faced with, inter alia, the novel issues of, firstly, whether the court has discretionary powers under Malaysian law and/or an inherent jurisdiction to grant a negative declaration in respect of infringement, and, secondly, whether it should grant recognition of a trademark in reliance on the own name doctrine. The own name doctrine is a legal doctrine in trademark law which states that a person had the right to the use of his own name as a trademark in good faith.
Read ArticleThailand’s DIP Issue a New “fast Track System” for Trademark Registration and Trademark Renewal
As per the recent Department of Intellectual Property (DIP)’s Declaration, the DIP has announced a Fast Track system for (1) Trademark Registration and (2) Trademark Renewal (effective from 23th February 2021), which can be summarised as follows:
Read ArticleSingapore: “Champengwine” Application Denied Due to Grounds of Bad Faith
“CHAMPAGNE,” in connection to wines, is a geographical indication that it is produced through certain local requirements and is grown from specific regions in France. Keep Waddling International Pte. Ltd (the applicant) and its related companies have been using the trademark “PENGWINE” as their house-mark for their wines originating from Chile since April 2004. These wines have been sold to many countries, including Singapore and promoted through numerous media platforms.
Read ArticleSingapore: Gromark Consumers Enterprise & Gk Laboratory (Asia): Ip Mediation
The Intellectual Property Office of Singapore (IPOS) recently had a successful mediation in October 2020, where the parties reached a mutually beneficial outcome that met the commercial concerns of both of them in a span of just eight hours. This success is enhanced by the fact that the dispute involved questions of intellectual property rights in both Singapore and overseas.
Read ArticleSingapore High Court's Decision on Element Six Technologies Ltd V. Iia Technologies Pte Ltd. [2020] Sghc 26
On February 7, 2020, the Singapore High Court reported its decision in the case of Element Six Technologies Ltd v. IIa Technologies Pte Ltd. [2020] SGHC 26, which treated various issues pertaining to novelty, priority date and anticipation. In particular, there are several interesting points in the decision concerning the law of anticipation which will be the focus of this article. Specifically, this article will touch on the issues related to patent entitlement to priority, novelty, parametritis claims, anticipation by an inevitable result and anticipation of ranges.
Read ArticleSingpore: Valentino S.p.a Loses to Matsuda & Co. Over Dispute in Trademark Name ‘Valentino’
Choosing a trademark for businesses comes with a risk, whether it is a given name, a surname, or a combination of the two. It is because others may be able to use these names in good faith without impinging upon the trademark owner’s rights. The more common the name, the more likely it is to be difficult to protect the trademark, except in combination with a given name. This case is an example of a dispute between two businesses who have chosen such trademark.
Read ArticleMyanmar: Update on Trademark Law Soft Opening
Steps are now underway to putting into practice Myanmar’s new Trademark Law, which passed on January 30, 2019. During the current soft opening period, trademark owners have exclusive access until at least March 2021 to re-file their trademarks in Myanmar electronically with the Department of Intellectual Property and obtain an earlier filing date, prior to the registration process opening to anyone more generally.
Read ArticleUntrue Promotions of "Daily Deals" Now Ceased at Expedia Singapore's Website
The misleading promotional activities on Expedia Singapore's website has now halted, thanks to the competition watchdog, the Competition and Consumer Commission of Singapore (“CCCS”).
Read ArticleSingapore: Brand Drug Owners Secure Second Round Victory Against Generics Who Failed to Declare Relevant Patents
Proprietors of brand-name drugs may heave another sigh of relief as the Singapore Court of Appeal in Zyfas Medical Co (Sued as a firm) v. Millennium Pharmaceuticals, Inc [2020] SGCA 84 re-affirmed its holding in Millennium Pharmaceuticals, Inc v. Drug Houses of Australia Pte Ltd [2019] SGCA 31 (the DHA decision) rejecting an overly-restrictive interpretation of the scope of the patent linkage regime in Singapore.
Read ArticleSIngapore: Rolex S.a. V. Fmtm Distribution Ltd [2020] Sgipos 6
FMTM Distribution Ltd (the applicant) is a company selling high-end luxury watches. The applicant applied to protect the trademark “MARINER” (the application mark) in Singapore on February 5, 2016, under Trade Mark Application No. 40201602064R in Class 14. Rolex S.A. (the opponent) is a watchmaker established in 1905, based in Geneva, Switzerland. The opponent has a registered trademark in Singapore under Registration No. T5925069E, “SUBMARINER”, filed in Class 14 (“the opponent’s mark), which was filed on June 11, 1959. Upon publication of the application mark, the opponent filed its notice of opposition in Singapore against the application mark on April 5, 2018.
Read ArticleSingapore Launches a New “Local Produce” Logo to Boost Local Food Production and Support
The Singapore Food Agency (SFA) aims to raise awareness on food security issues by focusing on the Singapore Food Story.
Read ArticleSingapore Launches a New “Local Produce” Logo to Boost Local Food Production and Support
The Singapore Food Agency (SFA) aims to raise awareness on food security issues by focusing on the Singapore Food Story.
Read ArticleSingapore Accedes to Locarno Agreement on Industrial Designs
On March 19, 2020, Singapore became the 58th member to join the Locarno Agreement, an international agreement on classification of industrial designs. The Locarno Agreement, also known as the Locarno Classification, is a multilateral treaty administered by the World Intellectual Property Organization (WIPO).
Read ArticleSingapore: ASAS Comments on the Rise in Feedback by Stakeholders and the Increasing Number of High-Profile Ad Complaints
The Advertising Standards Authority of Singapore (‘ASAS’), which was set up in 1976 to inter alia promote ethical advertising in Singapore, has played a crucial role over the years. Its importance and significance, as the self-regulatory body of the advertising industry, have increased manifold in the past few years. The ASAS has also been pro-actively engaging with stakeholders for feedback. In this regard the ASAS received a total of 359 instances of feedback in 2019. This is a significant increase from previous years, and could perhaps be attributed to the ramped-up public awareness outreach efforts by the ASAS.
Read ArticleSingapore: a Shining Example of Passing Off
The following decision issued on April 2, 2020, appears to go against Singapore’s first-to-file system and highlights the fact that prior rights (if any) in Singapore can be protected under the tort of passing off under the Trade Marks Act (TMA).
Read ArticleSingapore: ASAS Issues Advisory on Advertisements on Health Products During COVID-19 Pandemic
Whilst the COVID-19 (Coronavirus Disease 2019) pandemic continues to upset every sphere of human activity in an unprecedented manner, the Advertising Standards Authority of Singapore (‘ASAS’) has noted that some local consumer-facing enterprises have attempted to aggressively advertise products and services that are intended for personal health and protection.
Read ArticleSingapore and Southeast Asia Intellectual Property Updates in First Quarter 2020
A roundup of the newsworthy mentions in the Southeast Asian from the first quarter of 2020.
Read ArticleDigi Mark Application Fails in Singapore: Teraoka Seiko Co., Ltd V. Digi International Inc. [2020] Sgipos 1
Digi International Inc. (“the Applicant”) is an American Industrial Internet of Things technology company headquartered in the United States of America founded in 1985.
Read ArticleSingapore Swings as an Intellectual Property Hub
Following big policy changes in 2019, the time is right to look at IP developments in this fast-evolving country. For the intellectual property field in Singapore, 2019 was an exciting year, with new policies to promote Singapore as an IP hub and legislative reforms leading the charge in opening up new areas of opportunity.
Read ArticleIndia’s Tm Registry Will Issue ‘Speaking Orders’
In India, IP owners and practitioners have found it difficult to fathom the exact reasons for refusal of registered trade mark applications, owing to the issuance of non-speaking orders by the Registrar of Trade Marks. The Intellectual Property Attorneys Association filed a public interest petition before the Delhi High Court, challenging the non-speaking orders passed by the Registrar of Trade Marks when refusing applications for registration of trade marks.
Read ArticleSINGAPORE: Decision Illustrates the Importance of Pre-Filing Searches
A recent case concerning two conflicting trademarks illustrates the importance of conducting pre-filing searches for existing and similar marks.
Read ArticleNutri-Grade Set to Commence Its Battle With Sugary Drinks from End-2021 as Part of Singapore’s War on Diabetes
After the announcement by Singapore’s Minister of State for Health, Edwin Tong, on the 10th October 2019 on the introduction of a mandatory Front-of-Pack label for packaged sugar-sweetened beverages , it has been announced that drinks with high sugar and/or saturated fat contents will be required to display a “Nutri-Grade” label with grades ranging from A to D (healthiest to unhealthiest) from end-2021 onwards.
Read ArticleSingapore: Principal Assistant Registrar Exercises Power to Give Decision Without a Hearing
As a result of inaction by the applicant, the Principal Assistant Registrar (PAR) exercised his power under Section 37(4) of the Trade Marks Rules to decide on a case on February 4, 2020, without any hearing.
Read ArticleIndonesia: Implementing Regulations for Geographical Indications
Since the geographical indication general provision was introduced in 2016 (under Law No. 20 of 2016 concerning the Trademark and Geographical Indication Law), there was no specific stipulation from the Indonesian government to support the law, until June 25, 2019, when the government enacted Ministry Regulation No. 12 of 2019 implementing the specific provisions regarding geographical indications.
Read ArticleRecent Decisions of the Singapore Personal Data Protection Commission
The Personal Data Protection Commission (“PDPC”) recently meted out financial penalties to two errant entities which were found to be in breach of Section 24 of the Personal Data Protection Act 2012 (“PDPA”).
Read ArticleSingapore: Ferrero Rocher—An (Unprotected) Shape Without a Name
Ferrero S.p.A. (the applicant) applied to register a 3D mark in Class 30 (under International Registration number 1199758) in Singapore (Trade Mark No. T1406403E) (application mark). The mark was described as “a coordinated packaging design, consisting of a crinkled gold foil spherical wrapping, in a brown pleated designed cup-holder with two gold lines. The combination is topped off with a white oval sticker, also designed with a gold rim with a black [sic: blank] white space,”
Read ArticleSingapore: Protection Against Cybersquatters Affirmed as a Matter of Public Policy
In the case of 3 Corporate Services Pte. Ltd. (the plaintiff) against Grabtaxi Holdings Pte. Ltd. (the defendant), decided on January 22, 2020 ([2020] SGHC 17), the High Court of Singapore made it clear that a cybersquatter cannot enforce an otherwise valid contract as a matter of public policy.
Read ArticleSingapore: Applications for Declaration of Invalidity Against Trademark Registrations Microarch, Sentalloy and Bioforce
This matter involved three invalidation proceedings instituted by Dentsply Sirona, Inc. (the applicant) against Trade Mark Registration Nos. T1301268F for the mark “Microarch”, T1301266Z for the mark “Sentalloy”, and T1301267H for the mark “Bioforce” (collectively, the subject marks) that were registered in the name of Tomy Incorporated (the proprietor). The applicant sought to invalidate the registrations of the subject marks under Sections 8(7)(a), 8(2)(b), 8(4)(b)(i), and 7(6) read with Sections 23(1) and 23(3) of the Singapore Trade Marks Act.
Read ArticleHarvard Club of Singapore and Its Founders Battle for Trademarks
The Harvard Club of Singapore (opponent) was an official alumni club of Harvard University (formed by the president and fellows of Harvard College (applicant)) whose status was revoked by the applicant due to issues concerning leadership of the club. With the revocation, the applicant withdrew its consent to the opponent’s use of the names “Harvard” and “Harvard Club.”
Read ArticlePrincipal Assistant Registrar Clarifies ‘Genuine Use’ for Purposes of Maintaining a Registered Trademark in Singapore
Aussino (USA) Inc. (proprietor) owned the AUSSINO trademark registered under No. T9910601C in Class 24 in Singapore since 1999 (trademark). On July 24, 2018, Aussino International Pte Ltd (applicant) applied to revoke the trademark under Section 22(1)(b) of the Trade Marks Act, alleging that it had not been used from July 2013 to July 2018. The revocation action was dismissed by the Principal Assistant Registrar (PAR) on December 11, 2019.
Read ArticleForeign Geographical Indications Welcomed in Cambodia
Champagne, a sparkling wine made from grapes grown in the French region of the same name, and one of France’s most famous products, became the first foreign product to be awarded geographical indication (GI) status in Cambodia on April 29, 2019.
Read ArticleSingapore: Recent Decisions of the Personal Data Protection Commission
The Personal Data Protection Commission (‘PDPC’) carried out certain investigations recently under Section 50(1) of the Personal Data Protection Act 2012 (‘PDPA’), and subsequently issued a warning and financial penalty on the respective errant entities below:
Read ArticleHow Start-Ups Are Safeguarding Against Hazardous Data Privacy Issues
As the digital economy expands at a rapid pace, companies continue to collect massive amounts of data and have come to be more dependent on this data to fuel their businesses. From e-commerce firms to healthtech firms, reams of data amassed from consumers are being used to better their offering of products and services. With the growth of this data-reliant digital economy, the concerns surrounding data privacy have grown too.
Read ArticleIndia Update – Patent Infringement
An action for patent infringement in India is not maintainable during the pendency of an appeal against an order revoking the patent.
Read ArticleSINGAPORE: Registrar Strikes Down Opposition in ‘Minterest’ Case
Minterest Private Limited (applicant) applied to register the trademark MINTEREST (application mark) in Class 36 in Singapore (Singapore Trade Mark No. 40201707514X). The application mark was accepted for publication and was opposed by Intuit Inc. (opponent).
Read ArticleIllicit Streaming Devices Under the Copyright Microscope in Singapore
For the first time in Singapore, a group of rights owners consisting of telecommunication companies and cable TV providers successfully enforced their rights against a seller of illicit streaming devices (ISDs).
Read ArticleRevisiting Long-Established Concepts on Independent and Dependent Patent Claims in Singapore:
The Intellectual Property Office of Singapore has recently announced in its newsletter dated August 14, 2019, that the current practice of examining independent and dependent claims as provided in the Examination Guidelines for Patent Applications (April 2019 version) continues to be in force.
Read ArticleIndonesia – Patent Working Requirement
Since 26 August 2016, all patent holders are obliged to “work” their patented invention in Indonesia, by either manufacturing their patented products or using their patented processes within 36 months from the date the patent is granted – article 20 of Law No 13 2016 on patents (‘the new law’).
Read ArticleRegistrar Dismisses Opposition to ‘Wonglo’ Trademark Application
In Multi Access Limited v. Guangzhou Pharmaceutical Holdings Limited [2019] SGIPOS 15, Guangzhou Pharmaceutical Holdings Limited (the applicant), a state-owned enterprise in China, applied for the trademark WONGLO (the application mark) in Singapore on December 15, 2015, under International Registration No. 1297792 (Singapore TM No.40201608455Q) in Classes 5, 30, and 32.
Read ArticleSingapore’s AGC Appeals Against Potentially Excessive Sentences for Sale of Android TV Boxes
In an unexpected twist of events following the conclusion of a 22-month court battle between a group of copyright owners and a retailer of Android TV boxes, the Attorney-General’s Chambers (the “AGC”) has filed a notice of appeal to the High Court against the sentences meted out by the State Court in Neil Kevin Gane v Jia Xiaofeng and Synnex Trading Pte Ltd (“Synnex Trading”).
Read ArticleAmendments to the Copyright Act in Singapore
The Ministry of Law and the Intellectual Property Office of Singapore (IPOS) published the Singapore Copyright Review Report recommending wide-ranging amendments to the Copyright Act in January 2019.
Read ArticleThe IP (Dispute Resolution) Bill in Singapore
Legislative amendments bringing broad-ranging reform to the intellectual property (IP) regime in Singapore were tabled before lawmakers in early July 2019, following public consultations in July 2017 and August 2018.
Read ArticleSINGAPORE: Court Rules ‘Tartan’ Is Not a Geographical Indication
Scotch Whisky Association (the appellant) is an association protecting the interests of leading distillers, blenders, and exporters of the Scotch Whisky trade worldwide. Isetan Mitsukoshi Ltd (the respondent) is a Japanese department store selling a variety of products, including alcoholic beverages.
Read ArticleThailand: Plain Cigarette Packaging Law Takes Effect
As per the Ministerial Regulations (MR) of the Ministry of Health on Plain Packaging of Cigarettes B.E. 2561 (2018) issued by virtue of Section 5, Paragraph 1, and Section 38, Paragraph 1, of the Tobacco Products Control Act B.E. 2560 (2017), the plain cigarette packaging law in Thailand is now in effect as of September 9, 2019. Thailand is the first country in Asia and the 11th country in the world to adopt this measure.
Read ArticleSingapore Set to Implement World’s First Advertising Ban for High Sugar Drinks
The Singapore Ministry of Health (MOH) announced recently that it will introduce a mandatory Front-of-Pack (“FOP”) label for packaged sugar-sweetened beverages (“SSBs”) with colour code and grade to inform consumers of the sugar content, i.e., whether it is healthy, neutral or unhealthy, so that consumers may make an informed decision when purchasing SSBs. An advertising prohibition on product advertisements for SSBs will also be implemented from next year.
Read ArticleRegistry of Geographical Indications in Singapore
A geographical indication (“GI”) is a sign that identifies a product as originating from a specific venue or location and has given characteristics and qualities that are unique to its location or origin.
Read ArticleUndeclared Medicinal Ingredients in Seemingly Ubiquitous Products Lands Parties in Hot Soup: Singapore
In Singapore, it is illegal to sell and supply products which contain undeclared potent medicinal ingredients. Anyone found contravening the said requirement is liable to prosecution and if convicted, may be imprisoned for up to 3 years and/ or face a fine of up to $100,000. Despite the deterrent mechanism which is in place, the Health Sciences Authority (‘HSA’) recently came across the following gross violations:
Read ArticleSingapore Trade Mark Oppositions – Confidentiali-Tea of Evidence Adduced
In the context of trade marks, it is relatively common for parties to adduce sales and marketing figures (which are, more often than not, deemed confidential) as part of their evidence in support of their case. But should the confidentiality of the said sales and marketing figures be safeguarded, and if in the affirmative, under what circumstances?
Read ArticleSingapore - Breach the Obligations Imposed by the PDPA, and Face Penalties
In two recent decisions issued by the Personal Data Protection Commission (‘PDPC’), investigations were carried out under Section 50(1) of the Personal Data Protection Act 2012 (‘PDPA’) and financial penalties were imposed on the errant entities. The circumstances which lead to this step by the PDPC are set out below:
Read ArticleBrand Drug Owners Vindicated Against Generics’ Launch Without Declaring Relevant Patents Under Patent Linkage
The Singapore Court of Appeal’s judgment in Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte Ltd [2019] SGCA 31 heralds momentous change in the pharmaceutical sector for brand drug owners seeking to enforce patents against generic competitors. The Court reversed an interlocutory decision of the High Court that made it difficult for brand drug owners to bring patent infringement actions against generic companies seeking to launch without declaring relevant patents under Singapore’s patent linkage regime.
Read ArticleSingapore: Request for Extension of Time to File a Notice of Opposition Against a Geographical Indication (“GI”)
Consorzio del Formaggio Parmigiano Reggiano v U.S. Dairy Export Council [2019] SGIPOS 12
Read ArticleNew Ministerial Regulations in Indonesia
The Ministry of Law and Human Rights (“MOLHR”) ratified the MOLHR Regulation No. 38 of 2018 concerning Applications for Patents (“Regulations”) on 28 December 2018.
Read ArticleMyanmar: New Patent Law
Myanmar’s Pyidaungsu Hluttaw Law No. 7/2019 (“Patent Law”) was approved on 11 March 2019; implementation is still pending. It follows the Trademark and Industrial Design Laws which were approved on 30 January 2019.
Read ArticleChampagne Awarded GI Status in Cambodia
A geographical indication (“GI”) is a sign that identifies a product as originating from a specific venue or location and has given characteristics and qualities that are unique to its location or origin.
Read ArticleHighlights of Changes to the Malaysian Trade Marks Act
We are excited to share with you the highlights of the changes to the Malaysian Trade Marks Act (“Amended TMA”) which is currently tabled for its third and final reading before the Malaysian Parliament when it sits in October 2019.
Read ArticleSingapore: New Intellectual Property Bill Heralds Significant Reform to IP Landscape
Legislative amendments bringing broad-ranging reform to the intellectual property (IP) regime in Singapore were tabled before lawmakers in early July 2019, following public consultations in July 2017 and August 2018.
Read ArticleSingapore – Post-Grant Patent Amendments Refused in Hitachi Case
In a recently decided case, Singapore Shipping Association and Association of Singapore Marine Industries v Hitachi, Ltd. and Mitsubishi Shipbuilding Co. Ltd. [2019] SGIPOS 5, the Registrar of Patents of the Intellectual Property Office of Singapore (IPOS) refused post-grant amendments to the claims of Singapore Patent No. 159788 under Section 83(1) of the Patents Act, which gives the Registrar a discretionary power to allow or refuse amendments to a patent during revocation proceedings.
Read ArticleTobacco Plain Packaging Law Becomes Effective July 2020 in Singapore
Since the introduction of measures regarding standardized packaging for all tobacco products by Singapore’s Ministry of Health (MOH) in October 2018, and the passing of the amendments to the Tobacco (Control of Advertisements and Sale) Act in March 2019, the MOH has introduced a subsidiary legislation to implement the new packaging and labeling requirements for all tobacco products in Singapore.
Read ArticleWell-Known Mark Triumphs Over Registered Trademark in Indonesia
Dewi Nilasari (appellant), a local entrepreneur, failed to retain proprietary rights to the NOVEC 1230 mark after the Indonesian Supreme Court dismissed her appeal in Decision No. 160 K/Pdt.Sus-HKI/2019 on February 21, 2019.
Read ArticleSingapore: Lutong Defeats the Slippery Slope of Adidas
Taiwan-based Lutong Enterprise Corp. and Adidas International Marketing, competitors from different ends of the world, crossed swords over the use of their respective marks before the Intellectual Property Office of Singapore (“Adidas International Marketing BV v Lutong Enterprise Corp [2018] SGIPOS 12”).
Read ArticlePhilippines: IPOPHL Clarifies Rules for Filing Divisional Patent Applications
On 1 September 2018, the Intellectual Property Office of the Philippines (“IPOPHL”) issued a Memorandum Circular No. 18-003 setting out the conditions and considerations when filing a divisional patent application in the Bureau of Patents (“BOP”).
Read ArticleArtificial Intelligence (AI) Patent Applications in Singapore: File-to-Grant Process Accelerated by IPOS
The Intellectual Property Office of Singapore (“IPOS”) launched an Accelerated Initiative for an Artificial Intelligence (“AI2”) programme that became effective on 26 April 2019. This AI2 programme speeds up the file-to-grant process for Artificial Intelligence (“AI”)-related patent applications to merely 6 months instead of the usual 2 to 3 years. According to IPOS, the AI2 programme makes Singapore’s patent granting for AI-related patent applications the fastest in the world.
Read ArticleMalaysia Update: Swiss-Type Second Medical Use Claims Patentable in Malaysia
The acceptance of second medical use claims in “Swiss-Type” claim format has attracted significant attention internationally as different jurisdictions vary in their approach.
Read ArticleSingapore: Opposition Fails Against Trademark Application by Sumatra Tobacco
In a decision dated April 10, 2019 (CTBAT International Co. Ltd v. N.V. Sumatra Tobacco Trading Company, [2019] SGIPOS 8), CTBAT International Co. Ltd (opponent) failed in its opposition against the registration of trademark application no. 4020151934T for TRI HAPPINESS (as a series of two marks) (the “Application Mark”) by N.V. Sumatra Tobacco Trading Company (applicant).
Read ArticleNew Regulations of the Thai Trademark Appeal Board Bring Changes to Procedures and Formalities of Appeals
New regulations of the Trademark Appeal Board B.E. 2561 (2018) (TTAB Regulations) became effective on March 25, 2019.
Read ArticleIndonesian Supreme Court Dismisses DC Comics Appeal
The Supreme Court of Indonesia, on May 28, 2019, dismissed an appeal (Decision No. 1105 K/Pdt.Sus-HKI/2018) brought by DC Comics against PT Marxing Fam Makmur (respondent).
Read ArticleSingapore Trademark: The Patissier Delivers a Bitter Chocolate for Aalst to Swallow
In a recent decision dated 9 April 2019, Aalst Chocolate Pte Ltd (“the Applicant”) unsuccessfully challenged the validity of a trade mark registration for a stylized version of the words “The Patissier” (the “Subject Mark”) in Aalst Chocolate Pte Ltd v The Patissier LLP [2019] SGIPOS 7.
Read ArticleSingapore: Guess? Inc.’s Inverted Triangle Found to Be More Dissimilar Than Similar to Applicant’s Mark
The Intellectual Property Office of Singapore issued its decision on February 27, 2019, rejecting Guess? Inc.’s (opponent) opposition to a triangle device mark, holding that it is more dissimilar than similar to the opponent’s earlier marks and that it would not cause confusion. Guess? Inc. v. Jen, Chi, [2019] SGIPOS 3.
Read ArticleIndonesia’s Unique Policy on Payment of Annual Patent Fees
The rules regarding payment of patent annual fees in Indonesia can be said to be rather unique and controversial. Since around year 2013, the Directorate General of Intellectual Property (DGIP) has been aggressively chasing patent owners for their unpaid annual fees even though their patents have been abandoned or deemed “void by law”.
Read ArticleCurbing Deliberate Online Falsehoods: A Step in the Right Direction in Singapore
As was aptly summarized in the Green Paper entitled “Deliberate Online Falsehoods: Challenges and Implications” published by the Singapore Ministry of Communications and Information and the Ministry of Law, around the world falsehoods are being deliberately spread online, to attack public institutions and individuals, with the aim of sowing discord amongst racial and religious communities, exploiting fault-lines, undermining public institutions, interfering in elections as well as other democratic processes, and weakening countries.
Read ArticlePatentability of Computer Related or Implemented Inventions (CRIs or CIIs)
Patent legislation and practice in the patentability assessment of computer related or implemented inventions differ from country to country. “Computer Related Inventions” (“CRIs”) or “Computer Implemented Inventions” (“CIIs”) has been given an explicit definition in some countries such as in Philippines and India.
Read ArticleInterpretation of Rules 610 and 611 of the Philippines’ Revised IRR for Patents
Following the issuance of Memorandum 18-003 on 17th September 2018 by Ms. Lolibeth R. Medrano, the Director of the Bureau of Patents (BOP), patent Applicants can now file a Voluntary Divisional Application (“VDA”) based on an earlier divisional application.
Read ArticleSingapore: Sunseap Group Pte Ltd & 2 Ors v Sun Electric Pte Ltd
In Sunseap Group Pte Ltd v Sun Electric Pte Ltd [2019] SGCA 4 (“Sunseap v Sun Electric”), the Court of Appeal, on 10 January 2019, in overturning the decision of the High Court, held that the High Court has original jurisdiction to hear patent revocation proceedings where such proceedings were brought by way of a counterclaim in a patent infringement action.
Read ArticleA Testament of Singapore's FinTech Fast Track (FTFT) Initiative
The first patent using the FinTech Fast Track Initiative (“FTFT”) was recently granted by the Intellectual Property Office of Singapore (“IPOS”) to Voyager Innovations Inc., a Philippines-based company that focuses on the delivery and development of digital technology services.
Read ArticleThe Patent Landscape for Autonomous Vehicles in Singapore
Self-driving or Autonomous Vehicles (“AV”) are set to be a reality, and no longer the stuff of science fiction. In Singapore, pilot trials are ongoing at the one-north district, a business park located in Queenstown, an area recognized for innovation, with the likes of Exploit Technologies (the commercialisation arm of the government body Agency for Science, Technology and Research and NUS Enterprise based there.
Read ArticleImprovements in the India IP Scene
The US Chamber of Commerce Global Innovation Policy Center (“GIPC”) has recently released its 2018 Intellectual Property Index (“IPI”) in February 2019. India has improved on its previous 2017 position of 44 in 2017 and now ranks at number 36 out of 50 countries.
Read ArticleSingapore: Trademark Case Focuses on Meaning of a Word
In a recent proceeding initiated by the Chicago Mercantile Exchange Inc. (CME), the Intellectual Property (IP) Office of Singapore on September 24, 2018, declared invalid two trademarks, BRENT and BRENT INDEX (subject marks), registered in the name of Intercontinental Exchange Holdings Inc. (ICE).
Read ArticleWell-Known Trademark Pierre Cardin Loses Final Battle in Indonesia Court
The long running dispute between Pierre Cardin ("Plaintiff") and Alexander Satryo Wibowo ("Defendant") finally reached its conclusion on 28 June 2018 (Supreme Court Decision No. 49 PK/Pdt.Sus-HKI/2018).
Read ArticleLate Submissions of Power of Attorney Documents for Patents and Design Now Acceptable in Vietnam
On 20th November 2018, the National Office of Intellectual Property (“NOIP”) issued Notice No. 13006/TB-SHTT (“Notice”), revising the timeline for submission of a Power of Attorney (“POA”) document in Vietnam thereby giving practitioners more time to comply with the requirement for their various patent and design filings and procedures.
Read ArticleSingapore: Chicago Mercantile Exchange Inc. v Intercontinental Exchange Holdings Inc.
In a recent proceeding initiated by the Chicago Mercantile Exchange Inc. (CME), two trademarks “BRENT” and “BRENT INDEX” (“Subject Marks”) registered in the name of Intercontinental Exchange Holdings Inc. (ICE) were declared invalid by the Intellectual Property Office of Singapore on 24th September 2018.
Read ArticlePhilippines: Intellectual Property Office Revises Mediation Rules
The Intellectual Property Office of the Philippines (“IPOPHL”) under the Intellectual Property Code of Philippines has revised the Rules on Mediation and published the same vide Memorandum Circular No. 08 (Series of 2018).
Read ArticleThe Proposed Draft Geographical Indications Act in Singapore
A geographical indication (“GI”) can be understood to be a sign which when applied to products corresponds with a particular geographical origin attributing certain essential and peculiar qualities or reputation to such products.
Read ArticleMyanmar: Updates on Trademark Procedures
Whilst the long awaited landmark changes to IP laws in Myanmar are yet to be finalised, the Deed Registration Law 2018 has been enacted by the Union Parliament of Myanmar.
Read ArticleIndonesia - Postponement Regimen on ‘Patent Working Requirements’
Article 20 of Law No. 13 of 2016 on patents that came into effect on August 26, 2016, requires patent holders to “work” their patents in order to support the transfer of technology, investment and/or job opportunities in Indonesia. To comply with the working requirements, patent holders need to implement their patents, for example, by way of either manufacturing their patented products or using their patented processes in Indonesia within 36 months from the date the patent is granted.
Read ArticleSingapore Court of Appeal Clarifies Stance on Entitlement to Patent Ownership
The recent decision of the Singapore Court of Appeal in Cicada Cube Pte Ltd v National University Hospital (Singapore) Pte Ltd [2018] SGCA 52 provides much needed clarity on the laws concerning entitlement to patent ownership.
Read ArticleSingapore - Similarity of Trade Marks Between Apple and Swatch Dismissed
In Apple Inc. v Swatch AG (Swatch S.A.) (Swatch Ltd.) [2018] SGIPOS 15, Apple Inc. (the ‘Opponent’) opposed the application to register the mark ‘Tick Different’ (the ‘Application Mark’) in Classes 9 and 14 made by Swatch AG (‘the Applicant’).
Read ArticleSingapore Trademark Revocation: Athleta Cannot Escape on Foot
In Bigfoot Internet Ventures Pte. Ltd. v Athleta (ITM) Inc. [2018] SGIPOS 10 (decision issued 2nd July 2018), a Singapore-registered trade mark held by a large American clothing conglomerate was partially revoked on grounds of non-use.
Read ArticleMonster Fails in Another Singapore Trademark Opposition Case
For the fourth time in less than 12 months, Monster Energy Company (‘MEC’) initiated trademark opposition proceedings at the Intellectual Property Office of Singapore (IPOS) with the aim at preventing another party’s registration of a mark containing the word “MONSTER”.
Read ArticleLaos – Patent, Design and Plant Variety Opposition Procedures Now Available
Laos’s new Law on Intellectual Property No.38/NA of November 15, 2017 was published electronically in the Laos official gazette on May 25, 2018, and became effective 15 days subsequent to its publication. This supersedes the previous Law on Intellectual Property No. 01/NA dated December 20, 2011.
Read ArticleIndonesia Trademark Cancellation Fails on Inadequate Documentation
In Yayasan Korpri Banjar v Yayasan Marta Berlian Husada DK (1314 K/Pdt.Sus-HKI/2017) [published 26th April 2018], the Supreme Court of Indonesia upheld a decision of the Commercial Court to reject a trademark cancellation suit.
Read ArticleSingapore Trademark Invalidation on Bad Faith
Though often pleaded, there are not many examples of oppositions succeeding on grounds of bad faith in Singapore. To succeed, the opponent will usually need to show that the applicant’s conduct fell below the acceptable standards of commercial behaviour.
Read Article99 Problems? Copyright ain’t one
Users of applications which act as a first point of call for those seeking a new property have grown exponentially in number in South East Asia, within a relatively short space of time. It is perhaps no surprise, then, that the case of PropertyGuru Pte Ltd v 99 Pte Ltd [2018] SGHC 52 before the Singapore High Court (“the Court”) attracted significant public attention.
Read ArticleSingapore Trademarks: Passing Off as a Fox Not a Cunning Move
In Fox Head, Inc. v Fox Street Wear Pte Ltd [2018] SGIPOS 8, Singaporean clothing distributor Fox Street Wear Pte Ltd (‘the Applicant’) applied to register the below mark (‘the Application Mark’) in Class 25. This was the same mark which had previously been refused registration in Singapore in Class 18, via a successful opposition in the case of Fox Street Wear Pte Ltd v Fox Racing, Inc. [2014] SGIPOS 13.
Read ArticleIndonesia Trademark Cancellation Action Upheld Despite Late Filing
In Djunatan Prambudi v PT Profilia Indotech (7 PK/Pdt.Sus-HKI/2018), the Supreme Court of Indonesia has rejected a Petition to reconsider its decision to deny an appeal for the overturning of a decision of the District Court to cancel three trademarks.
Read ArticleNew Procedures for Trademark Opposition in Laos
Laos’s new Law on Intellectual Property No.38/NA of November 15, 2017 was published electronically in the Laos official gazette on May 25, 2018, and became effective 15 days subsequent to its publication. This supersedes the previous Law on Intellectual Property No. 01/NA dated December 20, 2011.
Read ArticleSimilarity of Marks Examined in Singapore 'Monster' Case
In Monster Energy Company v Glamco Co., Ltd. [2018] SGIPOS 7, multinational energy drinks manufacturer Monster (‘the Opponent’) unsuccessfully opposed an application to register the mark ‘SWEET MONSTER’ (‘the Application Mark’) in Class 30 by Korean dessert purveyor Glamco (‘the Applicant’).
Read ArticleDoctrine of Equivalents Challenged in Singapore
In the recent decision of Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] SGCA 18, the Singapore Court of Appeal (the “Court”) reaffirmed the law on patent construction in Singapore and clarified the Singapore position in relation to the UK Supreme Court’s decision in Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 (“Actavis”).
Read ArticleFintech Patent Applications to be Fast-Tracked in Singapore
In line with Singapore’s vision to become a Smart Nation, the Intellectual Property Office of Singapore (IPOS) has launched a FinTech Fast Track (FTFT) initiative, effective from 26 April 2018 for a period of 12 months, in order to expedite the file-to-grant process for FinTech patent applications for as fast as 6 months. Normally, it will take an average of 42 months from filing before a patent application can be granted in Singapore.
Read ArticleSingapore - What Constitutes a Family of Trademarks?
McCHICKEN®, McNUGGETS® and McFLURRY® immediately conjure up images of the ‘family of marks’ owned by McDonald’s Corporation. Indeed, the ‘family of marks’ doctrine is well-established in trademark law. Be that as it may, can it be said that there exists a family of marks when they are not owned by the same entity? What needs to be proven in order to qualify as a family of marks? Is mere use sufficient?
Read ArticleUpdates to Vietnam Patent and Trademark Procedures
New regulations with regard to patent and trademark procedures in Vietnam came into force on 15th January 2018. These amended regulations aim to bring the Vietnamese intellectual property system in line with recent developments. Below are some of the main changes based on guidelines laid out in Circular No. 16/2016/TT-BKHCN from the Ministry of Science and Technology, Vietnam.
Read ArticleRectification of the Patents Register – A Singapore Perspective (05/02/2018)
In the recent case of Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322, the Singapore High Court addressed, for the first time, key procedural issues associated with corrections to patent forms and priority data, as well as corrections to the Singapore Patents Register (the “Register”).
Read ArticleUpdates to Vietnam Patent Regime (26/1/2018)
New regulations with regard to patent applications in Vietnam came into force on 15th January 2018. These amended regulations aim to bring the Vietnamese intellectual property system in line with recent developments. Below are three of the main changes based on guidelines laid out in Circular No. 16/2016/TT-BKHCN from the Ministry of Science and Technology, Vietnam.
Read ArticleIs 'Patent Working' Information Confidential in India? (22/1/2018)
The very foundation of the patent system is a quid pro quo - a set of exclusive rights granted to a patentee in exchange for inter alia the patentee’s duty to fulfil the society’s reasonable requirements in relation to the invention (including the ‘working’ of the said invention within the jurisdiction).
Read ArticleLouis Vuitton Case in Singapore Clarifies Definitions of 'Import' and 'Export' for Trademark Infringement
In the recent Singapore High Court case of Louis Vuitton Malletier v Megastar Shipping Pte Ltd [2017] SGHC 305, the Court held that a freight forwarder who was unwittingly sent counterfeit goods into Singapore for transshipment was not liable for trademark infringement.
Read ArticleGeographical Indication (‘GI’) Registration in India for 'Rasgulla': Sweet News to be Taken with a Pinch of Salt?
The newsfeeds of Intellectual Property enthusiasts and connoisseurs of fine desserts were recently inundated with news of the Rasgulla being granted Geographical Indication (‘GI’) registration in India. In the midst of all the hype and hoopla, the Chief Minister of West Bengal (a State to the east of India) went on to tweet “Sweet news for us all. We are very happy and proud that #Bengal has been granted GI (Geographical Indication) status for Rosogulla.”
Read ArticleMattel, Inc. v. Aman Bijal Mehta: A Loss of Face for 'Barbie' in India? (11/12/17)
Mattel, Inc. has raised an issue about the trade mark "Barbie" in India, against the producers of a film in Hindi entitled ‘Tera Intezaar’ which was due to be released on 24th November 2017.
Read ArticleSingapore and China PPH Extension Keeps Up Accelerated and Dynamic Patent Procedure (11/12/17)
The Intellectual Property Office of Singapore (IPOS) and State Intellectual Property Office of China (SIPO) have extended their joint effort for fast and efficient patent protection through the Patent Prosecution Highway (PPH) program. The extension agreement was signed on September 17, 2017 and will be effective until August 31, 2019.
Read ArticleNew Indonesian Customs Regulation for Protection of IP Rights (11/12/17)
The Indonesian Government has recently implemented legislation to assist IP owners to enforce their copyrights and trademarks. The Regulation (No. 20 of 2017) came into force on August 2, 2017.
Read ArticleBrunei‘s Patent Examination System to Increase Efficiency Through Agreement with Japan (11/10/17)
On August 28, 2017, the Brunei Intellectual Property Office (BruIPO) signed an agreement to introduce a new patent examination initiative - the Patent Prosecution Highway Plus (PPH+) - with the Japan Patent Office (JPO), which will commence on October 1, 2017.
Read ArticleMyanmar Presents New Trademark Bill (18/9/2017)
Myanmar has yet to produce its own specific legislation on trademarks. As a member of the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), the nation is expected to deliver its IP laws in the near future to provide protection for trademarks, copyright, patents, and other intellectual property.
Read ArticleUpdates on Use Requirements for Trademark Registrations in the Philippines (6/9/2017)
The Intellectual Property Office of the Philippines (IPOPHL) recently announced changes to the filing of Declaration of Actual Use (DAU) for registered marks.
Read ArticlePost-Grant Amendments from Method of Treatment to Swiss-Style – The Singapore Position Clarified (6/9/2017)
In the landmark case of Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45, the Singapore Court of Appeal explored, inter alia, the permissibility of amending method of treatment claims to Swiss-style claims. Significantly, the matter was heard before a 5-Judge panel in the Court of Appeal. Court of Appeal hearings typically feature a 3-Judge panel and a quorum of 5 Judges is reserved for cases of particular importance.
Read ArticleAccelerated Patent Examination in Philippines Through PPH Partnership with EPO (6/9/2017)
In recent years, the European Patent Office (EPO) has partnered with several domestic patent offices in Patent Prosecution Highway (PPH) programmes, with the aim of speeding up examination processes for corresponding applications filed in participating intellectual property offices.
Read ArticleInsights on Franchising: A Singapore Perspective (26/6/2017)
Singapore is a multi-racial and a multi-cultural country that demands variety in all aspects of its marketplace. Recently, news of the imminent departure of bubble tea franchise Gong Cha from Singapore has directed attention towards a new beverage brand, LiHo, started by a former franchisee of Gong Cha.
Read ArticleThailand Patent Registry Set to Enforce Modified Examination Regime for Greater Efficiency (12/06/2017)
Throughout 2017 so far, the government in Thailand has been signalling its intention to revamp the country’s patent system to provide a more efficient standard of service to applicants and inventors.
Read ArticleNew Online System for Cambodia Trademark Registration (11/06/2017)
On 25 May 2017, the Ministry of Commerce in Cambodia launched an online trademark registration system for local and international businesses and individuals to protect their marks against infringement.
Read ArticleSingapore Trademark Invalidation Action Is Big Boxing Bout (30/05/2017)
A decision on a Singapore trademark invalidation action issued in May 2017 by IPOS assessed distinctiveness, descriptiveness and whether the use of the mark had become customary in the language and practice of the trade.
Read ArticleSingapore Parallel Imports: Court Clarifies Scope of the Parallel Importation Defense (24/05/2017)
Parallel imports are genuine goods that are put on the market by a trade mark proprietor in one country, and subsequently purchased and imported into another country for resale. Singapore permits parallel importation.
Read ArticleSingapore Copyright Infringement Cannot Extend to Directories (04/05/2017)
The Court of Appeal decision in Global Yellow Pages Ltd v Promedia Directories Pte Ltd [2017] SGCA 28 affirmed the decision of the High Court dated 28th January 2016 - ruling in favour of Promedia Directories (“the Defendant”) and dismissing Global Yellow Pages’ (“the Plaintiff”) appeal. The case has set important precedent in Singapore copyright law with regard to compilations of factual material, outlining the extent to which copyright protection may cover these kinds of works.
Read ArticleSingapore Trademark Revocation - Apple's Sherlock Killed Off! (03/05/2017)
Despite the recent popularity surge in old technological phenomena, with Nintendo’s Pokémon being ubiquitous on small hand-held screens again, and Nokia having relaunched – to widespread excitement - its iconic 3310 phone, it is not always easy for tech giants to hold on to past products and features in the hope of one day re-marketing them. Such was proven in the Singapore trademark revocation case of Bigfoot Internet Ventures Pte Ltd v Apple Inc. [2017] SGIPOS 4.
Read ArticleSingapore Patent Protection Examined in Car Crash Camera Case (17/04/2017)
The judgment in Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48 concerned an infringement action and an application for a declaration of infringement brought by Mr. Lee Tat Cheng (“the Plaintiff”), proprietor of Singapore Patent No. 87795. It further related to a counterclaim of revocation/invalidity and groundless threats of infringement proceedings brought by Maka GPS (“the Defendant”).
Read ArticleSingapore Announces New Patent Rules and Fees to Promote Innovation (20/03/2017)
Singapore has recently announced a range of major changes to its patent system that will affect those seeking protection in a variety of ways.
Read ArticleRevised Trademark Rules in India (17/03/2017)
The Government of India announced broad changes to the Trade Mark Rules on 6 March 2017. The changes came into effect immediately.
Read ArticleAudi Drives the A-One Out of Singapore (17/02/2017)
In a bid to bolster its intellectual property portfolio in Singapore, German car manufacturer Audi (‘the applicant’) recently succeeded partially in the revocation of a device mark in Audi AG v Lim Ching Kwang.
Read ArticleCambodia Becomes First Asian EPO Validation State (17/02/2017)
On January 23rd in Phnom Penh, an agreement was signed between Cambodian Senior Minister for Industry Cham Prasidh and Benoit Batistelli, President of the European Patent Office, stipulating that patents registered with the European Patent Office (EPO) will be valid in Cambodia, with a date of 1st July 2017 set as the projected entry into force of the agreement.
Read ArticleSingapore: No Snap Judgment on Similarity of Marks (02/02/2017)
The recent opposition matter between two mobile software application manufacturers before the Intellectual Property Office of Singapore (IPOS) of Apptitude Pte Ltd v. MGG Software Pte Ltd was a battle for trademark rights in an expanding niche market.
Read ArticleNo Break Given to Nestlé in Kit Kat Shape Mark Appeal in Singapore (26/12/2016)
A Kit Kat bar, with its two-finger and four-finger breakable wafers coated with chocolate, is surely one of the most famously-shaped food items that one could enjoy at a local store almost anywhere around the world to ‘have a break’ – as the product’s long-running tagline goes. Yet, in the conclusion of a long-running dispute, Nestle recently lost its battle to prevent a competitor from utilising the two- and four-finger shape for its own chocolate bars.
Read ArticleCambodia Accedes to PCT and Fosters IP Development (06/11/2016)
Following accession to the World Trade Organization (“WTO”) in September 2014 and the signing of a Memorandum of Understanding with the Intellectual Property Office of Singapore (IPOS) in January 2015, Cambodia has upped its efforts in developing its intellectual property environment even further.
Read ArticlePost-Grant Amendments from Methods of Treatment to Swiss-Style Claims in Singapore (05/10/2016)
This is a landmark patent case heard in the Singapore High Court by Justice George Wei. The plaintiff’s patent contained method of treatment (MOT) claims which are not patentable under Singapore Law. The plaintiff sought the Court’s leave to amend the MOT claims to Swiss-style claims, and the defendant opposed the amendment.
Read ArticleThailand Trademark Act Amendments (19/09/2016)
Thailand is gearing up to become a member of the Madrid Protocol concerning the International Registration of Trademarks (the “Madrid Protocol”). It began by amending the current Trademark Act B.E. 2534 (the “Act”) and introduced amendments to procedures, extended its protective scope and revised the deadlines and fees. It also introduced a new international trademark filing system, preparing Thailand for its accession to the Madrid Protocol.
Read ArticleUpdate: Myanmar Trademark Practice
With significant changes in the political landscape of Myanmar (also known as Burma), there are similar expectations for corresponding changes in the economic and business practices as well. This further affects the expectations of IP holders to better protect their rights in this country. Currently, Myanmar is working with the World Intellectual Property office (WIPO) and World Trademarks Office (WTO) to introduce new IP laws which include legislation covering trademarks.
Read ArticleTelephone Directories May Not Always Be Protected by Copyright in Singapore
It is trite that copyright does not protect facts. No man may claim a monopoly over what is found in nature. Copyright only protects the expression of ideas - and even then - only the original expression of ideas.
Read ArticleUnderstanding Patent Abandonment Rules in Indonesia
When a patent owner desires to abandon a patent, usually they simply do so by non-action, i.e. by stopping payment of the annuity fees. However, the same may not be true in Indonesia, and this has now become one of the most debated subjects among IP practitioners in this territory.
Read ArticleSingapore Adopts Initiatives to Further Enhance Quality of Examination
Singapore has begun operations as ASEAN's first International Patent Search and Examination Authority under the Patent Cooperation Treaty (PCT) on 1 September 2015. With its appointment in 2014, Singapore becomes the first country in the ASEAN region as well as the fifth country in Asia after China, Japan, India, and Korea to join the 19 Intellectual Property Offices worldwide as International Authorities for the PCT.
Read ArticleUSPA Scores in Singapore
This was a trade mark opposition before the Intellectual Property Office of Singapore, by The Polo/Lauren Company LP (‘PLC’), in relation to Singapore trademark application no. T1215440A in Class 09 [for eyewear; ophthalmic eyewear frames; reading glasses; sunglasses; eyeglass cases and covers; sun visors (eyewear)] (‘Application Mark’) filed by United States Polo Association ('USPA’).
Read ArticlePost-Grant Amendments in Infringement Proceedings in Singapore: Be on your Best Behaviour or Else
In Ship’s Equipment Centre Bremen GmbH v Fuji Trading (Singapore) Pte Ltd and others, the High Court of Singapore ruled in favour of the Defendants refusing to allow the Plaintiff to make post-grant amendments to Singapore Patent SG 110370 (“the Patent”).
Read ArticleSingapore Patents and Industrial Design to Gain Recognition in Cambodia
On 20 January 2015, Cambodia’s Ministry of Industry and Handicraft (MIH) has entered into an agreement with the Intellectual Property Office of Singapore, committing to recognize patents and industrial designs registered in Singapore.
Read ArticleMalaysian Patent Revoked Due to Lack of Novelty
In Suit No. 22NCVC-489-04-2012 between Fukuyama Automation Sdn Bhd (the plaintiff) and Xin Xin Engineering and Trading and Wong Thiam Fook (collectively referred to as the defendants), the High Court of Malaya invalidated the plaintiff’s Malaysian Patent No. MY-124182-A due to lack of novelty in view of the prior disclosure of the Japanese Patent No. 2812353 (JP2812353). Subsequently, the High Court dismissed the infringement case filed by the Plaintiff.
Read ArticleMalaysia: Federal Court Clarifies Section 42 of the Copyright Act 1987
In the case of Dura-Mine Sdn Bhd vs Elster Metering and George Kent (Malaysia) Berhad, the Federal Court of Malaysia had occasion to rule on the scope and application of Section 42 of the Copyright Act 1987 (hereinafter refer to as the “The Act”)
Read ArticleDesign Laws Improve in Singapore
The Intellectual Property Office of Singapore (IPOS) takes another step towards enhancing and strengthening Singapore’s Intellectual Property (IP) system.
Read ArticleSingapore Plant Varieties Protection Act Expands Reach
Singapore has recently expanded the scope of its Plant Varieties Protection Act ("Act") to extend the scope of plant varieties protection to all plant genera and species. The primary aim of this amendment is to encourage investments on research and development of new plant varieties, which have economic potential.
Read ArticleDisclosures During Patent Litigation: To Request or Not To Request?
In Syntroleum v. Neste Oil Singapore, the Singapore High Court dismissed two sets of applications filed by the defendant for the disclosure of three categories of documents by the plaintiff in respect of Singapore Patent 172045 (the 045 patent), Singapore Patent 169053 (the 053 patent) and the United States Patent 5,705,722 (the US 722 patent).
Read ArticleThe Puzzle of Common “P” in Singapore
Tao, Hsiu-chih (the applicant) filed Singapore trademark application number T1015606G for the figurative mark Ts.Project (application mark). This application was accepted and published on April 29, 2011. Pirelli & C SpA (the opponent) opposed the application mark on the ground of similarity to their previously registered marks, passing off by the applicant and that the application was made in bad faith.
Read ArticleMalaysia – Novelty Test Clarified by Court of Appeal
The Court of Appeal in Malaysia reversed the High Court’s decision in SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2011] 4 CLJ.
Read ArticleSingapore and EPO sign Patent Prosecution Highway, Effective January 2015
Patent Prosecution Highway (PPH), which is a mutual agreement between two offices allowing applicants to request a fast-track examination by using the examination conducted by the other office or vice versa, has been continuously gaining popularity worldwide as an alternative route to expedite the examination of a patent application.
Read ArticleSingapore Amends Copyright Laws
Singapore Parliament in July 2014 amended its copyright laws by strengthening its position against online piracy. The new law intends to provide copyright owners with better ability and effective means to protect their rights in the online space.
Read ArticleSecret Designs in the Philippines
The Intellectual Property Office of the Philippines (IPOPHL) has issued Memorandum-Circular No. 14-004 on 20 May 2014 allowing applicants to file a request for deferment of publication enabling designers and companies applying for the registration of industrial designs to keep them secret from competitors until the designs are made available in the market.
Read ArticleSEIKO... SEIKI... Say What? The Likelihood of Confusion in Singapore
The SEIKI trademark was recently granted registration in Singapore despite an opposition from the proprietors of the SEIKO mark. The Registrar dismissed the opposition despite finding that SEIKO is a wellknown mark and that the two marks are similar. A closer examination of the Registrar’s reasoning, however, reveals that the decision is not as incongruous as it may seem at first glance.
Read ArticleThe Sweet Taste of “Mango” is Not for Everyone
“Mango” is commonly known as the juicy stone fruit belonging to the genus Mangifera. But to others, it means more. To Consolidated Artists BV, “Mango” is a trademark symbolic of quality bags, fashion and accessories. Recently, MANGO has been the subject of a dispute before the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL).
Read ArticlePatents as Collateral for Singapore Companies
Patents were first used as collateral to secure financing by Thomas Edison in the late 1880s. Edison used his patent for the incandescent electric light bulb as collateral to secure financing to start his company, the General Electric Company.
Read ArticleLandmark Decision on Determining Statutory Damages in Singapore
In Converse Inc. v. Ramesh Ramchandani et al., Converse had elected to request an award of statutory damages after an interlocutory judgment had found Mr. Ramchandani liable for infringing Converse’s high-cut Chuck Taylor All Star canvas shoes. Accordingly, the High Court of Singapore was given the unfamiliar task of assessing the amount of statutory damages to be awarded under Section 31(5) and (6) of the Trade Marks Act.
Read ArticleCoffee Wars Brewing in Thailand
Brothers, Damrong and Damras Maslae, are owners and operators of a Bangkok coffee cart called Starbung Coffee.
Read ArticlePhilippines: Building Façade Denied Registration
On November 11, 2013, the Director General of the Intellectual Property Office of the Philippines (IPOPHIL) dismissed the appeals filed by Fun Ranch Mega Development, Inc. from the decision of the Director of Trademarks denying the registration of a façade of a building for lack of a distinguishing feature and function as an identifier of the source of goods and services.
Read ArticleDesign Infringement Claim Backfires in Malaysia
In a court action between Tropicana Products, Inc. (“Tropicana”) and the F&N companies (Fraser and Neave, Limited and its subsidiaries, F&N Diaries (M) Sdn Bhd and F&N Beverages Manufacturing Sdn Bhd) (“F&N” collectively), the Court of Appeals in Malaysia (“Appeals Court”) reversed the decision of the Kuala Lumpur High Court (“High Court”) granting Tropicana’s infringement claims and further revoking F&N’s industrial design registrations.
Read ArticleIncense Design Registrations Burn Up in Smoke
In the cases of Koay Kar Kheng v Rong Qiang Incense (M) Sdn Bhd and Koay Kar Kheng v Seong Loong (M) Sdn Bhd, the High Court of Malaya (“High Court”) revoked and expunged two (2) industrial design registrations, bearing designs of incense products registered under Class 99, from the Register of Industrial Designs due to lack of novelty over prior designs already disclosed to the public before the respective priority dates of the industrial design registrations.
Read ArticleVietnam and Philippines Keeps Persistent Fight Against IPR Violators
The office of the United States Trade Representative (USTR) annually prepares the ‘Special 301 Report’ which identifies countries that do not provide adequate and effective protection of Intellectual Property Rights and pose trade barriers to US companies and products.The report contains countries considered to be providing inadequate and ineffective protection and the list of countries are categorized as ‘Priority Foreign Countries,’ ‘Priority Watch List,’ or ‘Watch List.’
Read ArticlePhilippines: Non-filing of Declaration of Actual Use is Tantamount to Abandonment of Interest
In a recent decision, the Supreme Court of the Philippines held that a registrant’s failure to file a Declaration of Actual Use (DAU) within the requisite period constituted abandonment or withdrawal of its vested rights in the trademark. Birkenstock Orthopaedie GmbH & Co. KG v. Philippine Shoe Expo Marketing Corp., G.R. No. 194307 (Sup. Ct. Nov. 20, 2013).
Read ArticleThe Margins of Discretion in Singapore
The recent decision by the Intellectual Property Office of Singapore (IPOS) between V Hotel and Jelco Properties concerning an Application for Restoration of Trademark Application and Request for Extension of Time (EOT), shows that IPOS continues to take a stringent position with regard to procedural defaults such as an attorney’s delay in responding to IPOS within the deadline.
Read ArticleKU DE TA Keeps Name in Singapore
In Guy Neale and others v Nine Squares, the Singapore High Court dismissed a trade mark invalidation suit and passing off claim and confirmed the requisite attributes for the establishment of goodwill.
Read ArticleSouth East Asia is Fertile Ground for Intellectual Property Recognisance and Growth
In 2013, several Southeast-Asian countries including Malaysia, Philippines and Singapore have seen some significant development in their respective Intellectual Property regime.
Read ArticleSingapore’s Apex Court Develops and Clarifies the Law of Trademarks
2013 has been a progressive year for Singapore as 3 Court of Appeal decisions have been handed down in relation to the law on trademarks and the tort of passing off.
Read ArticleBirkenstock prevails and steps on competition
The Philippines Supreme Court was once again confronted with the issue on ownership of trademark in its recently decided case of Birkenstock Orthopaedie GMBH and Co. KG vs. Philippine Shoe Expo Marketing Corporation (G.R. No. 194307, November 20, 2013).
Read ArticleSingapore: Delay Spells Death for Trademark
Tilaknagar Industries Ltd. ("Applicants") had applied for three trademark applications for the stylized version of the mark "Savoy Club" ("Applicants' marks") while Distileerderij En Likburstokerij Herman Jansen B.V. ("Respondents") filed a trade mark application for the word mark "Savoy Club" ("the Intervening Application"). Notices of Opposition against the Applicants' marks were filed in July 2011.
Read ArticleA New Patent Prosecution Highway with SIPO
The Intellectual Property Office of Singapore (IPOS) has recently signed a Memorandum of Understanding (MoU) with the State Intellectual Property Office of China (SIPO) to establish a two-year Patent Prosecution Highway (PPH) pilot programme between the two intellectual property offices. The pilot program is scheduled to commence on 1 September 2013.
Read ArticleMoves Towards Consolidation of Data Privacy Law in Indonesia
Of all human rights, privacy can be one of the most difficult to balance. This is exacerbated by the Internet where free, easy and voluntary dissemination of information is routine both in the business and privately.
Read ArticleIndia Accedes to Madrid Protocol
On 8 April 2013, India finally deposited the instrument acceding to the Madrid Protocol. The international trademark registration system is expected to come into force in India from 8 July 2013. It became the 90th contracting party to join the Madrid Protocol.
Read ArticleTrademarks in Malaysia – The Position of Well-Known Marks
Protection given to Well-Known marks in Malaysia
Read ArticleSingapore Copyright Saga – Right of Privacy v Virtual Copyright
Update on Odex Anime case in Singapore
Read ArticleAsian Countries Fight Copyright Infringement
Activities taken up by different Asian countries to eradicate copyright infringement.
Read ArticleInitiatives at Philippines IP Office
Developments and new initiatives within the Philippines IP Office.
Read ArticleIndonesia GI Protection
The Latest Developments in the Protection of Geographical Indications in Indonesia
Read ArticleVietnam Trademark Practice
At a Glance – Trademark Practices in Vietnam: Your 2007 Update
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