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Since June 2009, IP Australia has been working towards reforming case management for trademark oppositions, says Michael Wolnizer, a partner at Davies Collison Cave in Melbourne. “The bill contains a number of proposed changes in relation to trademark opposition proceedings and other provisions in the Trade Marks Act (1995) although much of the detail has been left to be included in the Regulations which are yet to be published,” he says. The bill contains significant provisions altering trademark opposition case management, custom seizure provisions, additional damages for trademark offences and extension of privilege to communications of overseas attorneys.
The consultation process began with a paper in June 2009 titled “Resolving Trade Mark Opposition Proceedings Faster,” which was followed by a subsequent paper in November 2009 “Towards a Stronger and More Efficient IP Rights System,” which dealt with trademarks as well as with other forms of IP including copyright, design and patents. In March this year, Wolnizer says, IP Australia released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, together with an Explanatory Memorandum (EM).
 Notice of Opposition. While the exact form of the Notice is to be specified in the Regulations, the intention appears to be that the Notice simply be a form stating opposition to an application which will not contain any detail such as grounds or particulars, says Wolnizer.
 Statement of Grounds and Particulars (SGP). Within one month from the Notice of Opposition, the opponent must lodge a SGP in respect of each ground of opposition. Failure to do so may result in the opposition being dismissed.
 Notice of Intention to Defend. Within one month of service of the SGP, an applicant must file a Notice of Intention to Defend the opposition (similar to a counter-statement in other jurisdictions), says Wolnizer. The EM indicates that there will be no fee associated with this action. Failure to file a Notice will result in the trademark application lapsing.
 Periods for Lodging Evidence. Wolnizer says the opponent will have three months within which to lodge evidencein-support of opposition. “If further time is required then the opponent must seek a direction from the Registrar. Extensions will not be allowed as of right. The same is likely to apply for evidence-in answer.” The period for lodging evidence-in-reply has been reduced from three to two months.
 Suspension. The Bill provides for a six month cooling off period with the consent of the parties, says Wolnizer. This may be extended to 12 months.
Lawyers at Griffith Hack say the bill, if enacted, will “improve the fit and function” of the country’s IP system. “If you are opposing a trademark application, you [will] have to provide the grounds of the opposition and the particulars supporting the grounds within a month of filing the Notice of Opposition, [and] an applicant will have to take positive steps if it intends to defend the Opposition,” the firm said.
Other changes include that parties can now bring their trademark disputes before the Australian Federal Magistrates Court, and that penalties for trademark infringement have increased and Australian Courts have discretion to award additional damages for trademark infringement.
Wolnizer told Asia IP that the earliest these changes will be introduced is January 2012, and notes that some of the details may change when the Regulations are released.
Due to recent amendments to the Trade Marks Regulations, the Australian Trade Marks Online Search System (ATMOSS) will now show an “address for correspondence” for international registrations (IR) holders, allowing documents to be served by posting or leaving them at a holder’s foreign address when there is no address for service in Australia available. In most cases, the address will be that of the holder’s representative before the International Bureau of the World Intellectual Property Organization (WIPO). An IP Australia statements says that these amendments will also ensure that the address of the International Bureau no longer incorrectly appears as the Australian address for service in any IR records.
The scope of trademark infringement on the internet continues to pose significant challenges for the courts, says Maurice Gonsalves, a partner at Mallesons Stephen Jaques in Sydney, citing the case of Mantra Group v. Tailly (no 2) (2010), in which Mallesons acted for the successful applicant.
adwords, search engine optimization, etc,” he says.
In addition, Gonsalves says, there are increasing signs that the courts will adopt a stricter approach when it comes to assessing trademark infringement (whether under the Trade Mark Act or under general law rights such as misleading or deceptive conduct and passing off).
“In the 1990s, there were a series of Australian cases providing a generous interpretation of trade indicia which might be regarded as misleading – Red Bull case, Duff Beer case, Paul Hogan cases, for example. Now, it seems that court decisions are retreating to a narrower position. The threshold is becoming higher to establish that a competitor’s appropriation of trade indicia, which might well involve a deliberate attempt to leverage off the goodwill acquired in successful brand identity symbols through the investment of others, amounts to unlawful conduct,” says Gonsalves.
Finally, the Federal Government’s Tobacco Plain Packaging Bill 2011 was introduced into Parliament on July 6, 2011, and has been referred to the House of Representatives’ Standing Committee for Health and Ageing. The draft proposes that all tobacco products will be required to be sold in plain packaging by July 1, 2012, and will restrict the use of trademarks, logos, brand imagery, colours, and promotional text appearing on tobacco packaging, and expand existing graphic health warnings to 75% of the front and 90% of the back of pack facings. This is the first of this type of legislation internationally.
Perhaps Australia’s most-publicized trademark case over the past two years, EJ Gallo Winery v. Lion Nathan resulted in the High Court ruling that there was relevant ‘use’ of a trademark under the 1995 Australian trademarks act, even though the goods under which the trademark was applied were not ‘projected’ into Australia, but rather made their way onto the market in a small quantity, and only incidentally. “The case was about competing alcoholic beverages, and has also led to the – perhaps surprising – outcome that ‘Radler beer’ and ‘wine’ are to be regarded as ‘goods of the same description’ when assessing trademark infringement,” effectively reversing the long-standing practice of the Trade Marks Office that beer and wine are not similar goods, says Gonsalves. Mallesons Stephen Jaques advised Lion Nathan in the case, while Corrs Chambers Westgarth advised EJ Gallo.
On April 21, 2010, in a judgment in Health World Ltd v. Shin-Sun Australia, the High Court substantially widened the definition of a “person aggrieved,” a threshold test for applications to challenge decisions in various areas of law including registered intellectual property such as trade marks, patents and designs. Health World, the owner of a trademark for Inner Health Plus, applied for cancellation and/or removal of Shin-Sun’s trademark for Healthplus. To succeed in its application, Health World had to establish that it was a person aggrieved; that is, Health World had to demonstrate that it was disadvantaged in a legal or practical sense by Shin-Sun’s trademark remaining on the register.
The High Court, allowing the appeal, considered that the word “aggrieved” should be construed liberally and that there is no exhaustive test for a “person aggrieved.” In particular, the High Court held that it is sufficient but not necessary for the applicant for removal of the mark to show that there is a reasonable possibility of a disadvantage in a legal or practical sense. Gonsalves says that the decision “could mean that trademark registrations (as well as other intellectual property registrations) may be more open to challenge” in the future. Brisbane-based Bennett & Philp advised Health World, while Middletons Lawyers advised Shin-Sun Australia.
Austin Nichols & Co Inc v. Lodestar Anstalt is a 2011 case which is significant because the trademark owner, Lodestar Anstalt, was able to defend the removal of its trademark from the Register of Trade Marks even although Lodestar was not able to provide evidence of use in Australia, by the Registrar exercising her discretion in favour of Lodestar. “Despite the trademark owner’s success in this case, it provides a salient reminder to trademark owners that they should not be complacent, as the discretion to not remove a trademark (where non-use is established) is only exercised in exceptional circumstances,” lawyers at Griffith Hack told Asia IP. “Trademark owners should ensure that their marks are used in Australia or they will be vulnerable to cancellation for non-use.” Mallesons Stephen Jaques advised the appellant, while Bennett & Philp acted for the respondent.
In Sports Warehouse, Inc. v. Fry Consulting, the Federal Court considered the registrability of the words Tennis Warehouse for online retail services featuring tennis clothing, tennis footwear and other tennis gear. The case is significant because of the court’s assessment of the evidence of use tendered by the applicant in support of its claim for registration under Section 41(5) of the Trade Marks Act. That evidence encompassed a wide range of activities on the part of Sports Warehouse, including actual sales to customers in Australia and website use.
China could see improvements to its trademark law in 2011, with the third revision of the law designed to shorten the cycle of trademark registration and rights and to simplify various procedures.
“I’m fully expecting the third revision of the trademark law,” says Pingting Xu, a trademark attorney at Ming & Sure Intellectual Property Law Firm in Beijing. “In 2006, relevant professionals began to prepare for the revisions, and a couple of dozen of conferences have been held. I have read the draft of the third revision and [see many improvements, including] cracking down on the act of infringement.” Xu told Asia IP that she believes applicants and owners of trademarks will be able to better protect their rights should the third revision becomes effective.
She also notes that even though some large enterprises have been working on infringement issues for more than decade, there are still infringing goods in the markets. But fixing the trademark laws alone will not completely resolve the problem of infringing goods. “The prices of goods with IP rights are more expensive for Chinese consumers,” she says.
According to lawyers at Chang Tsi & Partners in Beijing, the State Council’s amendments to the trademark law have been included in this year’s legislative schedule.
Peng Yi, an IP specialist at Anderson and Anderson in Guangzhou, notes that the State Administration for Industry & Commerce (SAIC) is working on an electronic system for trademark related issues, which will include application and protection for international trademarks protected under the Madrid System. The SAIC is also working on the electronic certificate for national trademark agents, says Yi. “This indicates the progress of SAIC’s determination” bringing the country’s IP regime up-to-date.
Yi says that the biggest challenges facing trademark owners in China is that they do not comprehend exactly what is being protected by trademark laws.
“In their understanding, the certificate of trademark is no different [than the] certificate of a house,” he says. “If they have a trademark certificate, [many trademark owners in China believe that] they will win the trademark infringement case with 100% surety.” Yi notes that this situation is getting better thanks to publicity and advertising about trademarks by local Industry & Commerce Departments.
Zach Wortham, senior manager at Wang Jing & Co in Guangzhou, says the biggest challenge facing trademark owners in China is the “heavy burden of proof” of infringement.
Furthermore, Wortham says, sometimes the information about the infringer is not clearly shown on the infringing product. “Unless a trademark owner can produce more detailed evidence, courts are reluctant to recognize the defendant as the infringer under such situation,” he said.
Lawyers at Orrick, Herrington & Sutcliffe in Beijing told Asia IP that trademark owners frequently have difficulty defining the amount of damages they have incurred in cases of trademark infringement. “There are three remedies ruled by the current Trademark Law, but they are not practical and makes difficult for the trademark owners to have reasonable compensation,” the firm said.
Tim Meng, managing partner at GoldenGate Law Firm in Beijing, says that rights-holders in China continue to face the same problem they’ve faced for years: “Infringement is still popular, the price to protect one’s IP right is too high and the cost to infringe another’s IP is not as significant as what it should be,” Meng says.
Yi says that a court in a key trademark infringement case in China recently ruled that the similarity or identity of the mark may not be the dominant factor, sometimes; the good itself may become the key. In this case, the trademark for automobile – “江淮 (jianghuai)” vs “大运 (dayun)” – was at issue. “In China, an automobile is a kind of luxury instrument, therefore, consumers will pay more attention to the good itself, and the difference of marks will much easier to distinguish, even if the two marks are substantively similar,” he said.
In Harley-Davidson v. Chrome Horse, Harley-Davidson, which has opened its first dealership in Beijing, found its business efforts hampered by Chrome Horse, which set up show rooms and service outlets in the Beijing area. Specifically, Chrome Horse, through its agents, committed various infringing acts, including the following using Harley-Davidson registered trademarks on its own products, using Harley Davidson logos in the shops, such as “FOR HARLEY DAVIDSON RIDER” in name cards and signboards, using Harley-Davidson trademarks and logos on their various websites, and falsely representing their business as an authorized Harley-Davidson dealer and as the only Harley-Davidson motorcycle importer in China.
The High People’s Court upheld the initial Intermediate People’s Court ruling that Chrome Horse and the various related parties committed trademark infringements and acts of unfair competition (including false advertisements ) and ordered, among other things, for the respective defendants to stop using “Ha Lei in CC” (Harley in Chinese) as an enterprise name and to cease any false advertisement activities. The initial judgment has also ordered the defendants to pay damages amounting to a total of Rmb165,000 (US$25,500). Harley-Davidson was advised by Baker & McKenzie.
Baker & McKenzie also represented Hasbro International and Hasbro, Inc on their successful ground breaking case against Guangzhou Xingjie Toy Company before the Yuexiu District People’s Court of Guangzhou. Xingjie, one of China’s major toy manufacturers, was found to be engaging in extensive infringement of Hasbro’s trademarks, including the use of Transformax, Optimus Prime and Autobot on Transformers lookalike toys since 2007. Such infringing toys could be found to be on sale all over China, including the major hypermarkets. The court decided that the above acts constitute an infringement of Hasbro’s exclusive trademark rights under Article 52(1) of the Trademark Law and ordered, among other things, for Xingjie to pay damages and costs amounting to Rmb190,000 (US$30,000). The case was the first time Hasbro engage in IP litigation in China. Guangdong Shen Jin Niu Law Firm and Guangdong Tao Sheng Law Firm also advised in the case.
Yi Jianlian v. Fujian Jinjiang Yi Jian Lian Sport Co determined that Yi Jianlian, a National Basketball Association star and a Chinese national basketball team member, is a “highly renowned trademark.” The case, a trademark registration dispute before the Beijing No.1 Intermediate People’s Court, is one of the few cases where the court held that the name of a celebrity can become a highly renowned trademark. The court chose to issue its judgment on April 26, 2010, World Intellectual Property Day, to mark the significance of this matter and broadcast its decision live online. The judgment was affirmed on appeal. Yi Jianlian was advised by Fangda Partners.
Vivien Chan & Co represented Land Rover for the review of their trademark applications for LR1, LR2, LR4 and LR5 on the designated goods of land vehicles, etc., in Class 12. The applications were initially rejected by the Chinese Trade Marks Office on the grounds that the applied for marks will mislead consumers in the origin of the products. Land Rover appealed to the Beijing First Intermediate People’s Court and successfully overturned the Trademark Review and Adjudication Board’s decisions on the grounds that the examinations of trademark administration authorities should follow the law and also the principles of fairness and openness. Many similar marks, such as S40, and XC10 have been approved for registration.
Meng says the case is also a good example of how trademark owners must choose the most suitable cause of action, whether that be trademark infringement, copyright infringement, and/or unfair competition. “Chinese courts are still reluctant to apply two or three causes of actions simultaneously and always treat unfair competition as the last choice,” Meng says.
In Hong Kong, there had been an increasing number of shadow companies which adopt other entities’ household names and trademarks as company names without authorization, says Kenny Wong, a partner at Mayer Brown JSM, who noted that over the years, his firm alone has represented brand owners in over 350 cases against shadow companies in Hong Kong.
The new statutory provisions on shadow companies came into effect on December 10, 2010. Brand owners who have obtained a favourable court order can invoke this new power of the Registrar by submitting a sealed copy of court order and a prescribed form of the Registrar, says Wong.
Wong says that brand owners should be aware of several salient points, including that it will be up to the brand owner to report and provide a sealed copy of the court order to the Registrar. “The Registrar will not actively search for court orders,” he says. A company name replaced under the new power cannot be re-registered by anyone without the Registrar’s consent.
Protecting intellectual property in Hong Kong may soon become a bit less expensive for IP owners, should a proposed income tax bill be approved.
 removing the requirement for the “use in Hong Kong” condition.
Finally, Wong notes that applicants from China continue to attempt to register in Hong Kong marks that strongly resemble marks of overseas proprietors, sometimes in unrelated classes. “Trademark owners and their agents need to be on constant lookout and spend money opposing or invalidating such applications to prevent dilution of their marks,” Wong says.
Baker & McKenzie advised LVMH Group worked to enforce in Hong Kong a judgment in the United States for US$3.5 million against a sophisticated syndicate which was involved in massscale counterfeiting activities throughout the world. A lawsuit was commenced in Hong Kong to enforce the US judgment as there are several properties in Hong Kong held by the US defendant and various nominees. A Mareva injunction was obtained to freeze the several properties and bank accounts of the US defendant and various nominees. Final judgment for US$3.5 million was also obtained in Hong Kong. This case involves many different legal issues and 10 defendants; five of the defendants are in the US and five of them are in Hong Kong. There were numerous documents and issues involving nominee companies to unravel before judgment could be obtained.
Baker & McKenzie has also been involved in ongoing investigation and civil litigation on behalf of Nokia against counterfeit mobile phone and mobile accessories traders located in Chung King Mansion, a building in Tsim Sha Tsui, Kowloon, noted for its cheap guesthouses, curry restaurants, clothing shops and foreign exchange offices. The phone traders located in Chung King Mansion are responsible for distributing a high percentage of all phones used in Africa, Latin America and the Middle East. The majority of these phones are either counterfeit phones or look-alike phones of Nokia products.
“This is the first time a mobile phone company has launched large-scale blanket legal action against the numerous phone traders in Chung King Mansion for trading in counterfeit and/or infringing mobile phones,” a firm spokesperson told Asia IP. “Legal actions included investigation, High Court proceedings, and personal service of High Court Writs of Summons, negotiations and settlements,” all under Hong Kong law.
In a hearing before the the Hong Kong Registrar of Trade Marks, Italian shoemaker Geox’s application for trademark registration of a design of a shoe with a cloud of air spurting out from the sole was refused on the ground of lack of distinctiveness. “A shoe with a cloud of air spurting out from the sole appears to be a fanciful mark in the eyes of most, but the Registrar views that when the mark is used on footwear, it merely shows that air can pass through the sole so the shoe allows high permeability of air, hence it designates the characteristics of the goods,” Mayer Brown JSM’s Wong told Asia IP.
“This facility of a public search has greatly simplified the procedure for conducting a search while ensuring transparency,” says Ashutosh Kane, a partner at WS Kane & Co in Mumbai.
However, Singh says this position is now changing, and trademark owners are themselves realizing the importance of approaching the competent court of jurisdiction where the cases are actually to be filed, and the problem of jurisdiction due to the awareness of trademark owners is improving.
Sunil B Krishna, a partner at Krishna & Saurastri Associates in Mumbai, says that a key area in which Indian IP owners continue to fall short is securing registrations for their trademarks in overseas markets.
IP owners continue to struggle with delays in processing trademark applications and completion of opposition procedures. Further, says Ranjan Negi, a partner at Amarchand & Mangaldas & Suresh A Shroff & Co in New Delhi, for quite some time now, no hearings have been scheduled either in respect of trademark applications or oppositions, leading to delays in registration of marks. “This challenge seems to be worsening on account of a backlog of matters even as hundreds of new applications are filed everyday at the Trade Marks Registry,” says Negi.
Anand and Anand advised Toyota in Delhi High Court in the ongoing Toyota Jidosha Kabushiki Kaisha v. Deepak Mangal & Others, which can be touted as a major victory for the Japanese automobile company.
“Toyota had filed an infringement and passing off action against Prius Auto Industries, a Delhi-based auto manufacturing concern, to protect its trademarks such as Toyota, Innova and Prius,” says Sandhya Singh. An ex parte interim injunction was granted in favour of Toyota, which was subsequently set aside in March 2010.
“Toyota had appealed against the order setting aside the ex parte injunction. The Appellate Bench took cognizance of the infringing use of Toyota’s marks by the respondents and directed them to alter their existing manner of use of the same on their product packaging, catalogue and advertisements,” says Singh.
The respondents were directed to write the sentence “vehicle and marks used for item identification only” in a conspicuous and consistent font as has been used for the other descriptive matter on their product packaging. The respondents were also directed to not write “Genuine Accessories” on their products without it being accompanied by “Of Prius Auto Industries.” The Court restrained the respondents from using the Toyota Logo and ordered them to maintain accounts for sales of products under the Prius trademark with the Court every six months.
DH Law Associates has advised Hindalco, the flagship company of the Aditya Birla Group and one of the largest aluminum foil manufacturers in the world, obtaining an ex parte injunction restraining a local manufacturer from infringing Hindalco’s trademark Freshwrap and copyright in respect of artistic works. The injunction also restrains the local manufacturer from passing off of their product Fresshpack as that of Hindalco’s by using similar trademarks and labels and trade dress, says Sidhartha Srivastava, a partner at the Mumbai-based firm.
In Larsen & Toubro v. Leuci Communications and Ors, for infringement of trademark by using the Plaintiff’s registered L&T logo and trademark in respect of chargers and its carton, the Delhi High Court was of the opinion that the Defendants had clearly copied the Plaintiff’s registered trademark and had no right to use the mark, establishing the Defendant’s intention to pass off their products as those of the Plaintiff. A significant issue considered by the Court was how an order in the captioned matter would be executed as against Defendants based in a foreign company, situated outside the jurisdiction of this Court.
Sah, the Wadia Ghandy lawyer, notes that this is the first case where the attention of the court was drawn to the Intellectual Property Rights (Imported Goods) Rules, 2007, under which the Plaintiff’s company may provide a notice to the Commissioner of Customs (or any other Customs Officer) informing him of infringement of its rights, with a request to suspend the clearance of the imported counterfeit goods.
A.T.V. Venugopal v. Ushodaya Enterprises involves an important question of law when it comes to trademark infringement where the Supreme Court of India has decided and laid down a test relating to fraudulent infringement and dishonesty, says Sushant Singh’s Singh. “The Court has summarized the entire law on the subject relating to trademark infringement, which has been a matter of judicial opinion for the last more than two decades and thereafter culled out the following relevant tests pertaining to infringement and dilution of the trademark by use of the trademark,” says Singh.
 The respondent company’s trademark Eenadu has extraordinary goodwill and reputation in the State of Andhra Pradesh, and therefore the use of the mark Eenadu is extremely well-known and is a household word in Andhra Pradesh. The mark may be a descriptive one, but it has also acquired secondary significance in Andhra Pradesh, and therefore the appellant’s use of the Eenadu trademark is causing dilution of the respondent’s well-known trademark.
 Additionally, the Court said that because the adoption of the word Eenadu by the appellant is ex facie fraudulent and mala fide from the very inception, permitting the appellant to carry on his business under the said trademark would be in fact to put the seal of approval of the Court on the dishonest, illegal and clandestine acts of the appellant, and that permitting honest and fair play ought to be the basis of the policies in the world of trade and business.
In Times Publishing House Limited & Anr v. Registrar of Newspapers for India & Ors in the High Court of Karnataka at Bangalore, the petitioners, Times Publishing House, questioned the previous orders issued by the Registrar of Newspapers for India, and also for a writ of mandamus to respondent not to verify, approve, authenticate or register the titles Financial Times Facsimile and/or FT Weekend Facsimile. When the matter was taken up, an application was moved by the respondents seeking dismissal of the writ petition for want of territorial jurisdiction. The said application was opposed by the petitioners on the ground that the entire matter could be heard in its entirety instead of adjudicating on the application moved. The court took up the matter to determine whether it has territorial jurisdiction to resolve the dispute between the petitioners and the respondents.
The petitioner had applied for the newspaper title Financial Times in English language in Bangalore and was granted the said newspaper title by the Registrar of Newspapers for India (RNI). The Times Publishing House (TPH) had started publishing the newspaper in English from Bangalore. Later, Financial Times Ltd of the United Kingdom filed a suit against the TPH before City Civil Court at Bangalore on the ground that it has a registered trademark. An ex parte order of temporary injunction was granted by the trial court, and the same was questioned by the petitioners. The TPH was also granted the second newspaper title Financial Times by the RNI and it started publishing the said newspaper in English from Delhi. A temporary injunction was granted in favour of respondent by the City Civil Court, restraining the petitioner from publishing the newspaper with the same title.
The court ultimately held that just because Financial Times was being published from Bangalore, it did not confer territorial jurisdiction except that the end use is in Karnataka. It was reiterated that the bundle of facts which constitute a cause of action for the Court to exercise jurisdiction were wanting and not forthcoming in the petition itself. The Court held that the end result of the cause of action did not confer jurisdiction, inasmuch as it was not a cause of action by itself. The Court dismissed the petition on the ground of lack of territorial jurisdiction.
Vikrant Rana, a partner at SS Rana & Co in New Delhi, told Asia IP that the decision was significant in determining the territorial jurisdiction of the case and curtailing the practice of forum shopping.
In July 2010, the TATA Group, one of India’s best-known companies, sued Greenpeace for trademark infringement (via tarnishment) after Greenpeace’s website featured a satirical game using TATA’s trade marks. The game was meant to highlight the plight of olive ridley turtles, allegedly being harmed by one of TATA’s factories.
“Initially, Justice Ravindra Bhat of the Delhi High Court suggested (but did not pass any direction) that Greenpeace should stop using the trademarks,” says Pooja Dodd of boutique firm IP Gurus in New Delhi. Greenpeace heeded the suggestion. However, in January 2011, the Judge liberally interpreted the right to freedom of speech and held that Greenpeace was within its rights to use the trademarks.
“The case is significant because it is a victory for free speech, but also risks encouraging ‘brandhackers’ and others seeking to use trademarks in unflattering contexts,” says Dodd.
The Central Jakarta Commercial Court declared a lawsuit filed by Gado, a well-known fashion company from Milan, against a local businessman regarding a dispute over the Dolce & Gabbana trademark unacceptable.
“The decision was disclosed by presiding judge Syarifuddin while reading the verdict at the Central Jakarta Commercial Court,” says Migni Myriasandra, managing director at Biro Oktroi Roosseno in Jakarta.
“In its legal considerations, the judges argued that the Central Jakarta Commercial Court was not authorized to investigate and prosecute the dispute between Gado against the defendant, Chandra Juwito,” says Myriasandra. The judges argued that the court which has the authority to investigate and prosecute this case is the Surabaya Commercial Court, since Chandra Juwito is domiciled in Surabaya.
“Gado will file a cassation since the judges did not consider the legislation provisions carefully, where if either party is domiciled abroad, a lawsuit should be filed to the Central Jakarta Commercial Court,” Myriasandra says.
Jasper Conran v. Franky Prayogo is a continuation of a criminal case that was adjourned in 2009. In 2009, Jasper Conran filed a cancellation lawsuit (a civil case) against the trademark Conran, owned by Franky Prayogo, a local businessman. The cancellation suit was rejected by the Commercial Court Judges, and both trademarks were allowed to be registered. Prayogo filed a police complaint while the cancellation suit is still ongoing. Even after the Commercial Court Decision’s became final and legally binding, Prayogo did not stop pursuing the criminal case. In December 2010, the Police issued a letter of termination of the investigation of this case based on lack of evidence. Jasper Conran was advised by Biro Oktroi Roosseno, while Franky Prayogo represented himself.
Additionally, French fashion handbag designer Longchamp filed an opposition regarding a Horse Riding Device trademark owned by local Indonesian businessman when they discovered, in the Trademark Official Gazette, that the local company was applying the trademark which is similar with their Longchamp and device trademark. The French company claimed that the applicant device is very similar (without a word mark).
 Filing of an invalidation action against a trademark (which was subject to an infringement action after a court decision of the infringement action is rendered) will be restricted.
 The decision of an invalidation action will no longer bind third parties. This means that any third party may bring an invalidation action against a trademark even after an invalidation action is brought by another party and a decision is rendered, the firm noted.
 The prohibition against the new registration of a trademark, within one year from the extinguishment of a similar trademark, is abolished.
In many cases, the trademark owner has not been aware of such applications and registrations in China. “If their own trademarks are registered by totally unrelated parties in China, Japanese companies cannot use their own trademarks in the Chinese market and sometimes also cannot export OEM products bearing their own marks from China,” the firm said.
Tadao Takashiba, a patent attorney and vice president of Shiga International Patent Office in Tokyo, says the Japan Patent Office is planning to revise the guidelines for similarity dissimilarity of goods and services in the near future, though the details have not yet been determined. “Trademark owners may have to change their trademark strategies,” Takashiba says.
It remains difficult to prove how well-known a trademark is, and to prove the acquisition of distinctiveness of a trademark through the use thereof, says Takenori Hiroe, chairman and director of Hiroe & Associates in Gifu city, in Japan’s Chūbu region. Hiroe also says that he would prefer Japan introduce a consent system for trademark examination. “Japan has adopted the substantive examination system, so it is difficult to approve the coexisting registrations of an identical or similar trademark with only the mutual consent of the related parties,” he says.
Tokyo-based Nishimura & Asahi advised Sumitomo Asset Management in a trademark invalidation trial case, where 3M brought an invalidation trial before the Japan Patent Office against the registered trademark Haito Monogatari 3M because it was confusingly similar to 3M trademarks. Nishimura & Asahi won the case, one of several brought to invalidate 3M-related trademarks in Japan, in December 2010. No appeal was made to the Intellectual Property High Court.
In August 2010, the Tokyo District Court held that the owner of an internet shopping website was not liable for trademark infringement despite third party companies displaying or selling bags, bibs and cell phone accessories bearing the plaintiff’s registered mark, Chupa Chups, or similar marks thereto. The Court ruled that the owner of the internet shopping website was just providing online space for an internet shop, and that sales agreements were concluded between the sellers and consumers.
“This is the first and only case in which a Japanese court rendered judgment regarding the issue of liability of the owner of an internet shopping website in the context of trademark infringement,” say lawyers at Baker & McKenzie. The defendant was Rakuten, owner of the largest internet shopping and internet auction website in Japan.
In November 2010, the Intellectual Property High Court rendered a decision in connection with the ability to register a bottle design of the beverage Yakult as a three-dimensional trademark. The IP High Court ruled that the bottle design had become famous in Japan and therefore could be registered as a three-dimensional trademark without any indication of trademark on the bottle, reversing the Japan Patent Office’s decision that rejected the trademark application. The Court recognized the secondary meaning of the bottle design itself per se, not bearing any word mark. This was the second case for a bottle design to be granted registration without any indication of a logo on the bottle, following the Coca-Cola bottle design.
In August 2010, the Intellectual Property High Court held that the use of registered trademarks in a transaction between the plaintiff’s parent company and the parent company’s Japanese distributor constitutes genuine trademark use as defense against a cancellation claim based on non-use. This reversed the Japan Patent Office’s decision that such use does not constitute the genuine use as defense to the cancellation claim based on nonuse. “In the first instance, the Japan Patent Office recognized that since no clear license agreement existed between the plaintiff and the Japanese company, the use of a registered mark by the latter does not constitute genuine use as defense to cancellation action based on non-use, even though there was an existing license agreement between the parent and Japanese company,” said lawyers at Baker & McKenzie.
 the plaintiff has been holding trademarks and other IP rights on behalf of the parent company and its’ subsidiaries.
Thus, the Baker & McKenzie lawyers say, the High Court ruled that the use of the registered mark by the Japanese company should be treated the same as it would be by the plaintiff’s licensee.
The court made it clear that parody trademarks are not illegal in Japan when a trademark registration for “Shi-sa” and a jumping cat device was registered for goods in Class 25 by a resident of Okinawa. Athletics gear maker Puma filed an opposition on the basis of the well-known Puma trademark for a number of reasons, including similarity and the fact that the “Shi-sa” device was liable to cause confusion regarding the origin of goods. The courts found that there was no legal notion of parody in the Japanese Trademark Law, and that the “Jumping Shi-sa” mark could not be considered a parody or to have taken a free ride on the goodwill of the Puma trademark.
In April 2010, the law granting power and authority to KIPO to enforce counterfeits was ratified; accordingly, says Kim, KIPO officials are now authorized to investigate and enforce trademark infringement cases.
Nahm also notes two other changes in KIPO procedure: trademark registration fees can now be paid in two instalments, reducing the burden on trademark owners, and owners of registered trademarks can now renew their registration simply by filing renewal applications and paying the renewal fees.
On March 7, 2010, the Korean Fair Trade Commission (KFTC) approved a Guideline on Examination of Unfair Exercise of Intellectual Property, which wholly amended the previous version. It came into force on April 7, 2010. “The KFTC has plans to investigate industries which pose serious risks of IP abuse, including the IT industry and the pharmaceutical industry,” says Young-Hill Liew, partner and head of the IP group at Yulchon Attorneys at Law.
IP owners continue to struggle to protect their intellectual property from counterfeits. Kim says that while the authorities are very proactive in cracking down, the importation of counterfeits from China is still a big problem in Korea.
Korea has seen part of the extended, multi-jurisdictional battle over the rights to the alligator device mark of Lacoste, used internationally on sportswear. Lacoste, whose alligator faces right, filed a trademark invalidation suit against Crocodile International’s device mark which is a crocodile facing left. Lacoste also filed a trademark cancellation action against Crocodile International’s combination mark (the term “Crocodile” plus the crocodile device facing left), alleging that the licensees of Crocodile International misused or abused Crocodile International’s marks causing confusion to the consumers.
After intense dispute, the Supreme Court finally ruled in favour of Lacoste in the invalidation trial. Crocodile International’s trademark registration is expected to be invalidated.
With regard to the cancellation trial, the Supreme Court also ruled in favour of Lacoste and remanded the case. The Patent Court, on remand, ruled in favour of Lacoste, Crocodile International appealed, and the Supreme Court finally ruled in favour of Lacoste. Crocodile International’s trademark registration is expected to be cancelled in the near future.
In addition, says Kim, the outcome of the battle in Korea is expected to have a significant impact on related litigations pending in other jurisdictions. This was the first case in Korea where the courts ruled on the “likelihood of confusion” element while reviewing cancellation for misuse or abuse of a registered trademark by licensees of a trademark owner.
Adidas, owner of the Adidas sports brand, and its Korean exclusive licensee, Adidas Korea, filed an infringement claim seeking preliminary injunctions against eBay Gmarket, an internet shopping mall operator, alleging that eBay Gmarket failed to take protective measures for Adidas in preventing Adidas counterfeits from being sold in their online shopping mall. This is the first case in Korea where the Supreme Court is expected to establish a scope of duty on an online shopping mall operator in protecting the rights of trademark owners.
In trademark litigation in connection with ASICS shoes, individuals sold goods affixed with marks that are identical or similar to ASCIS’ registered trademarks. In addition, these individuals also filed trademark applications for these marks. ASICS filed criminal complaints and a civil claim against these individuals. “These individuals were found guilty of trademark infringement, and the civil claim is still pending,” says Kim.
ASICS also filed an opposition against their trademark applications and succeeded in leading KIPO to reject the applications. This is one of the largest attempts of a famous Japanese sports brand to eliminate counterfeiters.
In Pan-West v. Katana Golf in the Seoul Central District Court, the court ruled that Pan-West’s trademark infringement claim against Katana Golf was trademark right abuse since Pan- West’s registered trademark Katana had not been used for a long time, and since Pan-West imported 200 golf clubs bearing the trademark in 2008 only after Katana Golf’s trademark became well known to consumers, says Nahm. An appeal is pending in the High Court.
The Intellectual Property Corporation of Malaysia (MyIPO) announced amendments to the Trade Marks and Patents Regulations in February 2011 which will result in a number of changes for trademark owners, including the introduction of expedited examination of trademark applications, says Wong Sai Fong, managing partner and co-head of the IP department at Shearn Delamore & Co in Kuala Lumpur.
Karen Abraham, a partner and co-head of the IP department at Shearn Delamore, says the official fees for all stages of a trademark prosecution have been raised substantially. “There are now additional fees to request for an oral hearing and when filing a series mark wherein the third and subsequent mark in the series will be subject to additional fees,” she says. Additionally, since the amendments came into force, documents can also be filed electronically for the first time.
Oon Yen Yen, a registered patent agent at Henry Goh & Co in Kuala Lumpur, says the amendments also have resulted in provisions for improved ordinary examination.
Malaysia is expected to accede to the Madrid Protocol shortly (see Asia IP, May 2011). “This is in line with our country’s obligation to accelerate the establishment of an ASEAN Economic Community by the year 2015,” says Geetha K, director of the trademarks and industrial designs division at KASS International in Kuala Lumpur. “The Madrid Protocol simplifies registration of a trademark in several countries and will be beneficial to trademark owners locally and abroad,” she says.
Geetha K says that other changes to Malaysian trademark practice include the acceptance of non traditional marks as trademarks, including 3D marks, scent marks, sound marks, animated marks and other non-conventional marks. In line with the amendments proposed for the Patents Act, the amended Trademarks Act will also allow trademark owners to mortgage their trademarks or use them to secure loans.
Long delays in the grant of registrations – particularly due to delays caused when applications reach the examination and hearing stages – continue to plague owners of trademarks and brands in Malaysia. “The amendments which introduced expedited examination of trademarks may, to a certain point, ease this problem, although it would only apply to applications filed after February 15, 2011, wherein a request would have to be made and approved before an application can proceed using expedited examination,” says Wong.
Linda Wang, a partner at Tay & Partners in Kuala Lumpur, says inconsistency remains in the decisions of MyIPO officers in raising objections and in the acceptance and rejection of trademarks.
In the continuing saga of the fight over the Giordano trademark in Malaysia, Yong Teng Hing had sought leave to appeal against the decision of the Court of Appeal in Yong Teng Hing v. Walton International. At the Federal Court, Tay & Partners had taken a preliminary objection to Yong’s leave application on the basis that the Federal Court has no jurisdiction to entertain the appeal as the matter (an opposition commenced at the Registry of Trade Marks) was heard on appeal to the High Court and the provision of the Courts of Judicature Act on granting of leave to appeal to the Federal Court states that a matter can only be appealed to the Federal Court if it is one that originates from the High Court.
The issue of whether the High Court was hearing the appeal from the Registrar’s decision as an appellate court or in the exercise of its original jurisdiction was to be decided for the first time by the Federal Court which reserved its judgment for almost a year. The Federal Court gave its written judgment in July 2011, stating that it has jurisdiction to entertain a matter which originated from the decision of the Registrar of Trade Marks as the High Court was exercising its original jurisdiction when hearing an appeal against the Registrar’s decision. The Federal Court expressly departed from another decision rendered earlier (by another quorum of the same apex court) on the same issue on jurisdiction in relation to a different subject matter.
“The rationale and decision of the Federal Court sets a binding precedent not only on appeals pursuant to the Trade Marks Act 1976 but also appeals pursuant to the Patents Act 1983,” says Wang. The proper hearing for Yong’s leave application has been set for another date.
Shearn Delamore & Co acted on behalf of the Agricultural and Processed Food Products Export Development Authority of India (APEDA) in its suit against Syarikat Faiza, the first case in line with geographical indication in Malaysia. The applicants, consisting of APEDA, The Tamil Nadu Tamil University (TNAU), Indian rice farmers and Indian rice exporters, had commenced cancellation proceedings in the High Court for the cancellation of the registration of the Ponni trademark from the Register. The High Court ruled that Ponni is recognizable among the trade and public as a variety of rice.
Syarikat Faiza’s registration of Ponni as a trademark allows the claim on Ponni as a trademark for all varieties of rice, but it was held that the use of Poni on anything other than actual Ponni rice is likely to cause confusion as the trade and public would assume that the use of the mark on rice denotes that the rice is Ponni rice with its particular characteristics and originating from the Tamil Nadu region, even if such rice are in fact not Ponni rice.
“The decision of the High Court gives form to the disqualification under the Trade Marks Act 1976 for the registration of geographical indications as trademarks,” says Abraham. “While such disqualification under the Act appears straightforward, the extent to which the Courts have been willing to recognize a mark as a geographical indication has not previously been clearly set forth. It would appear that the High Court in this case has been willing to accept that any acceptance by members of the public that a mark is a geographical indication would mean that such a mark is disqualified for registration as a trademark.” Jasbeer, Nur & Lee advised Syarikat Faiza.
KASS International advised Malaysian food and beverage companies in a trademark expungement and passing off case on how to defend and counter claim against the plaintiff in the suit, which involved the Sri Paandi trademark for Indian food. Geetha K says the case was well publicized by the media due to the involvement of a well-known brand in Malaysia and a multimillion dollar business.
The court found in favour of Raytheon in a trademark action in Lockheed Martin v. Raytheon. Lockheed Martin is a security company in the business of researching, developing and manufacturing jet fighters, missiles and space systems, while Raytheon is in the similar business of research, developing and manufacturing defence and aerospace systems and equipment. Lockheed Martin filed an application to expunge Raytheon’s Paveway trademark used for laser-guided bombs that are manufactured and sold by Raytheon to the US government and militaries around the word. Lockheed Martin also manufactures and sells similar laser-guided bombs under the name Paveway Laser Guided Bombs to the US government and to militaries around the world.
Lockheed Martin claimed that the term Paveway is generic term for laser-guided bombs which function based on similar or identical technology, and that Raytheon does not own the right to the term Paveway. The case evaluated principles of trademark first use, indicator of origin and distinctiveness in the context of laser-guided bombs and military weaponry which are marketed and sold through unique trade channels. Skrine advised Raytheon, while Lee Hishamuddin Allen & Gledhill acted for Lockheed Martin.
New Zealand is in the process of updating its intellectual property laws, including its trademarks law.
The Trade Marks (International Treaties and Enforcement) Amendment Bill received its second reading the New Zealand parliament on August 16, 2011. The Bill amends both the Trade Marks Act 2002 and the Copyright Act 1994, with the most notable amendments proposed in the bill reflectling the New Zealand Government’s decision to join the Nice Agreement, the Singapore Treaty, and the Madrid Protocol. It bolsters border protection measures to combat the growing trade in counterfeit goods and clarifies the law relating to trademark infringement by parallel imported goods, says Frank Callus, principal at Henry Hughes Patent & Trade Mark Attorneys in Wellington.
Lawyers at AJ Park, in a client alert on the firm’s website, note that the Bill faces two more stages before it is passed; the committee of the whole House and the third reading. The firm says it is expected the Bill will come into effect in mid-2012 following the drafting of regulations to support the changes.
Relatively few IP cases reach the New Zealand Court of Appeal, and fewer trademark cases do, which made NV Sumatra Tobacco Trading Company v. British American Tobacco (Brands) notable.
The Court of Appeal ruled in favour of British American Tobacco (Brands) Incorporated (BAT) in its opposition to applications filed by NV Sumatra Tobacco Trading Company to register the trademarks Lucky Draw and Lucky Dream for cigarettes and related products. The Court held that the Lucky Draw and Lucky Dream marks are similar to BAT’s Lucky Strike marks. In coming to its decision on this point, the Court confirmed the importance of the first portion of a mark for purposes of comparison. Use of the word “Lucky” followed by a single syllable word was held to create a risk of confusion – even though neither “Draw” nor “Dream” sound like “Strike.” The conceptual similarity between the marks was another key consideration which led to the Court’s finding.
NV Sumatra’s appeal was dismissed on every ground pleaded, BAT’s cross appeal was allowed, and the Court ordered that NV Sumatra pay BAT’s costs for a standard appeal (as well as for second counsel). The case is particularly significant as it deals with establishing trademarks and issues of confusion between marks in a highly restrictive sales and advertising environment, namely the promotion and sale of tobacco products in New Zealand, where the promotion of the goods and their marks is virtually prohibited. BAT was represented by Wellington-based Buddle Findlay, while NV Sumatra was advised by Cullen & Co of Brisbane, Australia.
Kensington Swan is acting for Cottonsoft Limited and its Indonesian parent, PT Purinusa Ekapersada, against SCA Hygiene Australasia Limited and its Swedish parent (owners of the Purex brand in relation to toilet tissue) in defending a trademark infringement case. The firm is providing advice and representation to the Cottonsoft parties to defend an interim injunction application. The claim brought by the SCA parties alleged trademark infringement, passing off and breach of the Fair Trading Act. It concerned use of the trademark Paseo Pure in relation to toilet tissue and other paper products, and was based on the SCA parties’ rights in the trademark Purex. The interim injunction application was resolved without a hearing and the firm continues to act in resolving various ongoing issues.
The Philippines Intellectual Property Office has recently promulgated Office Order No 99, Series of 2011, amending the rules governing inter partes cases, including trademark opposition; trademark cancellation; cancellation of invention patents, utility model registrations, industrial design registrations, and registrations of layout designs or topographies of integrated circuits, says Alex Ferdinand S Fider, senior partner and head of the intellectual property department at Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW) in Makati. The amendments took effect on July 17, 2011.
 The total period of time to file the Verified Notice of Opposition has been reduced to a maximum period of 90 days from the date of publication of the application sought to be opposed (as compared to the 120 day period under the old rules).
 The total period of time to file the Verified Answer (or responsive pleading) is reduced to a maximum period of 90 days from the date of receipt by the respondent of the Notice to Answer (as compared to the 120-day period under the old rules).
 The opposer or petitioner may attach to the opposition or cancellation pleading photocopies of documentary evidence and/or affidavit of witnesses in support thereof and/or photographs of object evidence, provided that the original and/or certified copies of the documentary evidence and the actual object evidence are submitted/presented during the original schedule of the preliminary conference.
 The Verified Notice of Opposition or Verified Petition for Cancellation must be accompanied by, among others, duly authenticated/consularized documents, e.g., Verification, Certification against Forum Shopping, Secretary’s Certificate (if applicable) or any other similar documents evidencing the authority of the signatory thereof, Special Power of Attorney, and any other related documents. The execution and authentication of these documents must be done before the filing of the opposition or petition. In any case, says Fider, only photocopies thereof are attached to the opposition or petition, the opposer or petitioner is given five days upon receipt of the order issued by the IPO to complete or cure the defect (i.e., submission of the original copies of these documents).
 The remedy in case of an adverse decision is the filing of an appeal with the IPO’s Office of the Director General within 30 days from receipt of the decision. The filing of the Motion for Reconsideration is not allowed.
In October 2010, the IPO issued the Rules of Procedure for IPO Mediation Proceedings. “The purpose of the IPO Mediation Rules is to encourage the use of alternative dispute resolution as part of resolving cases filed before the IPO,” Fider says.
Under the IPO Mediation Rules, the following cases filed with the IPO are required or mandated to undergo mediation: (a) administrative complaints for violation of intellectual property rights and/or unfair competition; (b) inter partes cases (i.e., opposition and cancellation cases); (c) disputes involving technology transfer payments; (d) disputes relating to the terms of a license involving the author’s rights to public performance or other communication of his work; (e) cases appealed before the IPO’s Office of the Director General from decisions of the IPO-BLA and IPO’s Documentation, Information, and Technology Transfer Bureau; and (f) all other cases which may be referred to mediation during the settlement period as declared by the IPO Director General.
 Allows parties may settle at any time prior to the end of the proceedings.
Fider says that infringement remains a major concern for trademark owners, especially for well-known marks which are not registered in the Philippines. “One of the significant challenges for trademark practitioners is how to deal with local applicants who apply for the registration of marks which clearly belong to other individuals and/or entities (i.e., well-known marks). These unscrupulous applicants usually file local applications ahead of the real trademark owners and before such owners enter the Philippine market,” he says.
Fider says IP practitioners hold out hope that the IPO will be more vigilant in screening applications by maintaining a list of suspicious applicants who are known to engage in this scheme.
In 2010, San Miguel Corporation was able to secure favourable decisions from the Intellectual Property Office’s Bureau of Legal Affairs (IPO-BLA) in connection with four opposition cases filed by Société des Produits Nestlé against San Miguel’s San Mig Coffee marks.
Nestlé claimed that SMC’s use of the mug device (albeit in non-red colors) as part of its San Mig Coffee label marks would lead to consumer confusion, arguing that it has the exclusive right to use the mug device with respect to coffee products. San Miguel argued that its San Mig Coffee label marks are not confusingly similar to Nestlé’s marks in view of the other elements appearing in its label marks, and that its use of the mug device is totally different from Nestlé’s red mug device. The IPO-BLA upheld San Miguel’s position, ruling that: (1) the marks involved are not confusingly similar; (2) the mug device is not the dominant feature of San Miguel’s label marks; and (3) the manner by which the mug device is depicted in San Miguel’s San Mig Coffee label marks is totally distinct and different from Nestlé’s red mug device.
Nestlé is currently appealing the decisions of the IPO-BLA with the IPO’s Office of the Director General. These cases are important because they will determine whether Nestlé indeed has exclusivity over the use of the mug device per se (regardless of colour) with respect to coffee products. Nestlé’s and San Miguel’s coffee products are currently the more popular brand of coffee products in the local market. San Miguel was advised by Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW), while Nestlé was advised by Sapalo Velez Bundang & Bulilan.
ACCRALAW is also advising McDonald’s Corporation in a pending contempt case filed by McDonald’s against the proprietors of LC Big Mak in the Philippines. In 2004, acting for and on behalf of McDonald’s, the firm was able to secure from the Philippine Supreme Court a favourable decision declaring that the marks LC Big Mak and Big Mak are infringing McDonald’s rights over its Big Mac trademark. A writ of execution was issued by the trial court to enforce the said decision, and was served on the respondent. However, the decision was not fully executed, which prompted McDonald’s to file an action with the trial court to declare the respondent in contempt. The contempt case is pending with the Makati trial court.
Quisumbing Torres, the Taguig-based Philippines member firm of Baker & McKenzie, represented a leading US-based pre-need health insurance provider in a trademark cancellation action filed against its mark by a Philippine-based pre-need health insurance provider. The cancellation case was decided in favour of the firm’s client by the Director General of the Intellectual Property Office, who declared that the mark involved belonged to the client by virtue of prior use, says partner Pericles Casuela.
“This case confirmed that the use of services of a trademark owner based abroad can be established through evidence of the availment of the services of the trademark owner through its affiliated establishments in the Philippines,” says Casuela. The adverse party has appealed to the Philippine Court of Appeals.
Coffee Partners, Inc v. San Francisco Coffee & Roastery, Inc reiterated a 1992 court ruling (Philips Export BV v. Court of Appeals, promulgated before implementation of the Intellectual Property Code of 1998) that a trade name need not be registered before the owner of such trade name could file an infringement action against the owner of an infringing trade name as long as the unregistered trade name is being used in commerce.
The Supreme Court of the Philippines compared the earlier trademark law with the present law and explained that while the earlier law required the registration of a trade name or mark, the new trademark law expressly removed the necessity of prior registration for an infringement action to proceed. The Coffee Partners case effectively removed the primacy of trademark registration over actual bona fide use, says Loste of Loste of Fortun Narvasa & Salazar.
The Intellectual Property Office of Singapore (IPOS) announced the launch of the IP Competency Framework (IPCF) on May 25, 2011. The IPOS has developed the IPCF to define the competencies required for key IP professionals and practitioners in the industry and accredit the attainment of these competencies into Continuing Professional Development qualifications that are recognized by the industry, says Stanley Lai, partner and head of the intellectual property and technology group at Allen & Gledhill. “The IPCF is the first of its kind in the world on a nationwide scale,” says Lai.
The IPOS will partner with the Singapore Workforce Development Agency to create a new sector for IP in Singapore under the Workforce Skills Qualification (WSQ) under a new framework known as IP WSQ.
The IPOS has also signed a Memorandum of Cooperation with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Office for the Harmonization of the Internal Market (OHIM) (the Trilateral Partners) to validate an agreed list of goods and services acceptable or otherwise in the four jurisdictions (the Trilateral List).
The Trilateral List expands the Nice Classification administered by the World Intellectual Property Organization (WIPO), and facilitates consistency and harmonization in the classification of goods and services internationally.
On April 21, 2011, the IPOS announced that the list of acceptable entries in the Trilateral List under the Memorandum of Cooperation with the Trilateral Partners is now available on the IPOS e-filing system of the application to register a trademark as well as the Classification Search on eTrademarks Search.
Dedar Singh Gill, managing director of intellectual property at Drew & Napier, notes that there have been several recent instances where infringing goods or cargo have reached Singapore in transit. “Allowing custom seizures of infringing goods and cargo in transit [would] assist trademark owners,” says Gill.
Leck says the increasing stringency was seen recently in Valentino Globe BV v. Pacific Rim Industries Inc, which was an appeal by Valentino Globe against the decision of the High Court where the Judge rejected Valentino’s opposition to Pacific Rim Industries’ application for the registration of its Emilio Valentino & V Device in Class 25 for leather and imitation of leather, and goods made of these materials and not included in other classes.
The appeal was ultimately dismissed and the marks set out above were held not to be similar. “The case shows a more stringent approach being taken by the courts in determining whether marks are deemed to be similar,” says Leck. “It also reiterates the difficulty that rights owners will face in showing confusion if their products are deemed to be ‘upmarket.’” Leck says the case also reiterates the difficulty in establishing bad faith in Singapore.
Baker & McKenzie.Wong & Leow successfully represented Clinique Laboratories, a subsidiary of Estée Lauder Inc, before the Singapore High Court where judgment was rendered for trademark infringement and passing off arising from the defendant’s use of the well known trade mark Clinique in relation to their skin care products, consultation services and aesthetic business. Although the defendants appealed the decision to the Singapore Court of Appeal, the firm were successful in having the appeal dismissed.
“In dismissing the appeal, the Singapore Court of Appeal did not overturn the findings of the High Court in its landmark decision, an affirmation that makes the Clinique mark the first to be judicially recognized as well known to the public in large in Singapore,” says Leck.
The Singapore High Court considered the scope of Sections 55 and 55A in the Trade Marks Act for the protection of wellknown trademarks in Guy Neale & Ors v. Ku De Ta. The sections in question relate to the protection and permitted use of well-known trademarks.
“The decision handed down by the Assistant Registrar held that the proprietor of a well known mark is entitled to restrain the use in Singapore of a registered trademark in relation to goods or services for which the latter is registered if (amongst other things) the allegedly offending trademark is not validly registered,” says Lai. “It is also not premature to bring an action under Section 55 of the Act to restrain the use of the allegedly offending registered trademark before the invalidation of the said registered trademark. Allen & Gledhill advised Guy Neale; Rodyk & Davidson advised Ku De Ta.
In Ozone Community Corp v. Advance Magazine Publishers Inc, Ozone successfully appealed to the High Court the decision of the Trade Marks Registry which had disallowed its trademark Hysteric Glamour from being registered due to the earlier mark Glamour. The High Court held that the distinctiveness of an earlier trademark was an important factor to be considered in the inquiry into the similarity between the marks, and this factor was not confined to the analysis of the likelihood of confusion. The Court of Appeal subsequently upheld the High Court’s decision. Drew & Napier advised Ozone, while Allen & Gledhill advised Advance.
In Festina Lotus v. Romanson, Festina Lotus opposed Romanson’s application for the mark J.Estina and device on the ground that it is confusingly similar to Festina’s Festina and device mark. The High Court held that in view of the growing phenomenon of brands crossing-over between goods that one would not commonly associate with each other, eg, cigarettes and clothing, the idea of “aesthetic complementarity” or “aesthetic harmony” was considered in determining whether there was similarity of goods. The licensing out of one’s trademark or engaging in a sister brand or diffusion line may inevitably lead to the same trademark being found on a multitude of goods available in the market. As such, certain goods like necklaces and clothing may be related and a broad classification of these goods as “fashion accessories” or “lifestyle goods” may be justified.
Like many other Asian nations, IP owners in Sri Lanka continue to face challenges in enforcement with regard to the entry of counterfeits into Sri Lanka, says J M Swaminathan, senior partner at Julius & Creasy in Colombo.
Swaminathan says he sees no changes to Sri Lanka’s trademarks law on the horizon, noting that the country amended its IP statute to be in line with TRIPS provision in 2003.
Several high profile trademark cases have made the news in Sri Lanka, including Chevron Lubricants Lanka PLC v. Dulaksha Enterprses (Pvt) Ltd & one other, which concerned the adulteration of Caltex lubricants. Swaminathan says the plaintiff filed an action against the defendants for the sale of adulterated lubricants under the Caltex brand name, claiming damages. The Court issued an enjoining order and the matter is fixed for objection and answer of the defendants.
In Shaw Wallace & Hedges Ltd v. Nandana Wickramanayake (NE Traders), alleging the infringement o Captain Jack Mackerel, action was instituted to halt the sale of canned fish under the brand Capital, which uses a get up similar to that of the Captain brand. The court issued an ex parte enjoining order and an interim injunction after hearing both parties. The matter is presently fixed for trial.
In September 2010, Taiwan and China entered into the Cross-Strait Agreement on IPR Protection and Cooperation, by which the parties agreed to mutually recognize the right to priority for trademarks, patents and plant varieties for which a first application has been submitted. In addition, says Yvonne Lin, a partner at Formosan Brothers Attorneys-at-Law in Taipei, the parties shall set up offices to report piracy, coordinate counter measures, prevent the registration of well-known trademarks by non-rightful users, and to handle other matters. Lin says that accordingly, Taiwan will make amendments to its regulations governing priority rights.
On May 31, 2011, the Legislative Yuan passed an amendment to the Trademark Act, which was last revised in 2003. The amendment has revised 71 articles, added 26 and deleted nine, resulting in a total of 111 articles in the Trademark Act. The promulgation date of the amendment is to be determined after corresponding measures are completed, says Crystal Chen, a partner at Tsai Lee & Chen Patent Attorneys & Attorneys at Law.
 To coordinate inconsistent viewpoints in juridical practice, the Amendment clearly specifies that a damage claim can only be made when the infringer has a subjective intent to commit the infringement act, either intentionally or negligently.
 To strengthen the protection of well-known trademarks, the Amendment clearly specifies that an act is deemed to be trademark infringement if there is “likelihood of dilution” of the distinctiveness or reputation of a well-known trademark, comparing to the “actual dilution” requirement under the current Act.
 In addition to direct infringement acts, such as use of infringing mark on the goods for sales in the marketplace, the Amendment further defines the auxiliary acts, such as the manufacture, import or export of labels, tags, packaging bearing the infringing trademark, as trademark infringement.
 The Amendment defines the act of knowingly display or sales of infringing products through electronic media or internet as trademark infringement, which may be subject to criminal liabilities.
Julia YM Hung, a partner at Saint Island International Patent & Law Offices, says that presently, the detention and seizure of imported or exported trademarked goods suspected of infringement in Taiwan is conducted according to the Operational Directions for Customs Authorities in Implementing Measures for Protecting the Rights and Interests in Patents, Trademarks and Copyrights. A trademark owner may, according to said directions, file with Customs a complaint accompanied by the required information and documents.
Furthermore, customs officials may conduct random goods inspections, she says. “If any imported or exported goods suspected of infringement are located, Customs will notify the concerned trademark owner or trademark agent, who must show up at the customs office to verify the concerned goods within one business day,” says Hung. Once the goods are verified to be counterfeits, the importer/exporter of the goods will be requested to provide relevant licensing documents.
The amended law will impose more burden on a trademark owner when he or she files a non-use cancellation action or an invalidation action, says Joy Pan, a partner at Baker & McKenzie in Taipei.
“He or she will have to prove the use of his or her mark in the past three years. This is especially so when the trademark is registered for defensive purposes,” she says. Pan notes that deletion of the minimum damage claim in an infringement case will increase a trademark owner’s burden to prove losses, and that such deletion may also encourage infringing activities.
Submitting a suitable and accurate display associated with the goods is the biggest challenge facing the owners in Taiwan, says Perkin Liaw, manager of international service at Tai E International Patent & Law Office.
Infringement through online media is a serious concern and continues to grow and diversify, says Peter J Dernbach, a partner at Winkler Partners. “It is increasingly difficult for trademark rights owners to develop an effective enforcement strategy,” he says.
Therefore, says Dernbach, while the foreign name used by the company may not be considered a “company name” for the purposes of Article 62, the owner of a famous registered mark that is comprised of foreign language elements may still assert Article 62 against other parties who use the elements of their famous registered marks as part of their foreign company name if such use causes a likelihood of confusion or actual dilution of the distinctiveness or reputation of the famous registered mark.
Baker & McKenzie acted for BeautyBank, an affiliate of Estée Lauder companies, in filing for a declaratory judgment and a non-use cancellation action against Sunnix International, a Taiwanese company. BeautyBank is a leading cosmetic company. Sunnix, which is notorious for claiming trademark infringements against renowned cosmetic companies and asking for huge compensation, wrote to the client’s Taiwan affiliate alleging trademark infringement.
The IP Court rendered a judgment in favour of Estée Lauder’s Taiwan affiliate on March 2, 2011; Sunnix did not appeal.
In May 2011, Taiwan’s IP Court affirmed that the use of the word Darjeeling on women’s lingerie may dilute the distinctiveness of the mark owned by the Darjeeling of Tea Board of India. Tsai Lee & Chen represents the Tea Board of India in this case.
In 2009 the Taiwan Intellectual Property Office upheld the trademark opposition against the registration of Darjeeling filed by Delta Lingerie. The Appeal Board later revoked and remanded the TIPO’s decision, believing that the Darjeeling certification mark is not a highly well-known mark commonly known by the general public in Taiwan, and that the consumer’s confusion is not likely owing that the markets of the goods/services of the two marks in question are obviously distinguishable and not in competition.
In dissatisfaction of the administrative decision rendered by the Appeal Board, the Tea Board of India filed Administrative Litigation with the Taiwan IP Court. The Court found the Appeal Board’s reasoning erroneous and affirmed the fame and reputation of Darjeeling mark in the mind of local public. Although the segments in the marketplace are obvious, objectively the use of Darjeeling on women’s lingerie may still disperse or dilute the attractiveness and character of Darjeeling of Tea Board of India as a strong indication to a single source of tea products. Delta Lingerie, however, had appealed to the Supreme Administrative Court, which is the last remedial resort for this certification mark dispute.
The owner of Doraemon, the well-known Japanese comic book/animation character, brought suit in Taiwan against an infringer who used the copyright work and trademark to manufacture and sell stuffed toys. The infringer was held guilty of Copyright Act and Trademark Action violations; the judgment was entered by the Taiwan Intellectual Property Court and became final in 2010.
With respect to the trademark issue, the defendant argued that the trademark owned by the complainant is a 2-dimensional device, not a 3-dimensional mark, so the trademark right in the mark does not extend to the use of the same device in 3-dimensional form (e.g. the stuffed toy in dispute). Despite the defendant’s argument, both the Supreme Court and the Intellectual Property Court agreed to the complainant’s answer to defendant’s argument, holding that trademark use under the Trademark Act does not refer to the use of the mark in 2-dimension form alone. Both courts found that the trademark device the defendant used on the stuffed toy will unquestionably be taken to serve as representation of the provenance of the product and that it is not some functional or decorative design as the defendant argued; therefore, the defendant’s use of the mark constitutes violation of complainant’s trademark right irrespective of the infringing device being 2-dimensional or 3-dimensional in form. Doraemon’s owners were represented by Taiwan International Patent & Law Office (TIPLO).
Thailand continues to work towards amending its trademark laws to be compliant with the requirements of the Madrid Protocol, says Daniel Greif, co-head of intellectual property at Siam Premier International Law Office in Bangkok. “Thailand has agreed to join Madrid, along with the other ASEAN members. Among the amendments being considered are allowing smell trademarks and allowing multiple class applications,” says Greif, who notes that Thailand plans to access and be a member of Madrid Protocol before the end of 2012.
The Department of Intellectual Property (DIP) prepared a draft amendment of the Trademark and Copyright Acts that included criminal liability for buyers of counterfeit or pirated products and the commercial building landlords who ignore tenants who sell pirated goods. The draft was submitted to the Cabinet for review and approval.
Greif says that trademark owners in Thailand continue to face challenges in front of the Trademark Registrar, whose practice is not yet consistently up to international levels.
Greif says that in Thailand, the DIP, which is in charge of trademark registration, issued the Guideline for Trade Mark Registration for internal use. The Guideline provides that the Registrar has to consider a trademark word-by-word, which means the Registrar would divide the word Oatley into Oat and Ley, and try to find the meaning of each word that might have direct reference to quality and character of the goods covered in the application.
“This makes it difficult for applicants to register their trademarks in Thailand when compared to the systems of other countries,” he says.
Thailand is expected to introduce a Franchising Business Act within the next year, say lawyers at Tilleke & Gibbins. A public hearing on the Franchising Business Bill, organized by the Ministry of Commerce was held in March 2011.
The Tilleke & Gibbins IP litigation team won a major victory for Yara International, a leading Norwegian agricultural company, in a trademark cancellation action. The firm filed a civil suit in the IP&IT Court requesting the cancellation of 19 trademarks filed by the defendants and claiming that the defendants were passing off of the Yara trademarks.
The Court ordered the cancellation and withdrawal of 16 of the defendants’ trademarks containing logos and wording that infringed Yara’s mark. The Court also acknowledged Yara’s better right over those logos and trademarks and ordered the defendants to stop using the trademarks. Finally, the Court instructed the defendants to publish a summary of the judgment in local newspapers.
The firm also secured a victory for Kobe Steel, a top producer of welding products in Thailand, against a local infringer in a landmark case before the Supreme Court of Thailand. The Court affirmed the legitimate protection of Kobe Steel’s best-selling packaging and its famous brand. The Court also cancelled the registration of the infringer’s similar trademarks and prohibited the use of the similar company name.
Part of Kobe Steel’s resounding success at Court may be attributed to its innovative use of five separate trademark registrations, which collectively cover the entire package design, the firm said. The use of multiple trademarks to cover a single packaging design is a defensive strategy that market leaders can employ to protect their valuable brands against infringers who want to cash in on their success.
Siam Premier has conducted numerous successful anticounterfeiting actions and raids for its clients, including Nike, Adidas, Oakley, Ray Ban and Levi Strauss. One example of the firm’s work targeted fake Nike jerseys sold at a retail shop in Bannpong District, Ratchaburi Province in central Thailand.
In June 2011, acting on instructions from the client, the firm’s raid team conducted a market survey in Ratchaburi Province. The objective of the survey was to identify shops and street stalls which were selling counterfeiting and/or infringing the Nike International registered trademarks. One street stall was identified by Siam Premier. The firm filed a complaint with the IPIT court in Ratchaburi Province in order to obtain permission and a search warrant. Police officers and Siam Premier raid team members conducted enforcement at the building.
A total of 85 infringing items which were seized by police. The seizures and the offenders, Chatwut Buasri, was charged under the Thai Trademark Act with selling, or offering for sale, goods bearing the Trademark of another. The offender was released on bail and the case was heard by the court the following day. The offender pleaded guilty and the firm is now awaiting an official copy of the court verdict.
The firm has also provided extensive and sophisticated advice to Diageo on the tension between trademark rights and advertising restrictions relating to promotion of alcoholic beverages in Thailand. Included among this advice were numerous real world examples of the types of adverting that is acceptable under the law in Thailand. This advice allowed Diageo to develop effective advertising campaigns for its products, says Greif.
Perfetti Van Melle, the owner of the well-known Chupa Chups brand of lollipops, sued European Food for the latter’s use of the trademark Joopy Joops (also in respect of lollipops) and a packaging design that the former considered too similar to its packaging design in the Intellectual Property and International Trade Court. The court decided in favour of European Food, saying that Joopy Joops was not similar to Chupa Chups enough to confuse the consumers and dismissing the lawsuit. Perfetti Van Melle appealed to the Supreme Court (the court of last resort) and the Supreme Court reversed the IP & IT Court’s decision. The Supreme Court said in its decision that Joopy Joops, contrary to what the IP & IT Court said, was similar to Chupa Chups enough to confuse small children who were the main group of consumers of lollipops. This is one of the few trademark imitation cases to ever be decided by the Supreme Court. Perfetti Van Melle was represented by Domnern Somgiat & Boonma.
LawPlus has advised Thai specialty drinks maker Osotspa Co and Shark AG of Austria in defending against actions by two global drinks companies, says Kowit Somwaiya, managing partner at the firm. The actions have reached from Australia to Europe and have become global disputes.
The Minister of Science and Technology is now drafting a circular to amend and supplement Circular No. 01/2007/ TT-BKHCN dated February 14, 2007, on industrial property assessment. The circular is expected to be enacted in 2011, says Hung.
Tran says that although counterfeiting and piracy remain a significant problem in Vietnam, the situation is getting better as some amendments to IP laws have been made for more effective enforcement. Contributing to this, on July 1, 2011, the consumer protection law officially took effect. “Authorities should do well to control the market to prevent speculation and smuggling, trade fraud, manufacturing and trading in counterfeit goods,” he says.
Hung says that though Vietnam has been working to bring trademark protection up to international standards, there are still shortcomings facing trademark owners.
Lawyers at Tilleke & Gibbins in Hanoi note that generally, there is a lack of criminal penalties and a lack of experienced judges in the IP sector. Some clients are reluctant to take action due to the unpredictability of the court system and potential drawn-out actions, the firm says.
“Yahoo” is a well-known mark of Yahoo! Inc which has been extensively used and registered in Vietnam since 1997. When it came to the attention of the company that a company named “Doanh nghiep Tu nhan YAHOOOOO!!!” has been registered in Vietnam since 2008, Yahoo! lodged a request with the Business Registrar of Planning and Investment Department of Long An Province to change the infringing company name “YAHOOOOO!!!” On October 18, 2010, the Business Registrar issued a Notification to the infringer requesting them to change the name “YAHOOOOOO!!!” In light of this Notification, in addition to proceeding with the procedure of changing a company name at the Business Registrar, Yahoo! also requested the infringer to voluntarily remove all infringing signs from their signboard as well as other business facilities of Doanh nghiep Tu nhan YAHOOOOO!!! Vision & Associates advised Yahoo!
Tilleke & Gibbins successfully represented leading electronics and appliance producer Panasonic against Vietnamese companies that unscrupulously attempted to register the trademarks PairSONIC, PASSONNIC, and PASSIONIC. Pursuant to the legal arguments submitted by the firm, the NOIP refused to register the infringing trademarks.
In these cases, the firm successfully proved the widespread usage and worldwide well-known status of its client’s PANASONIC trademark. The firm was also able to successfully argue that although there were some minor phonetic and visual differences in the infringing trademarks, they were all indeed confusingly similar to the client’s trademark PANASONIC.
A leading producer and exporter of Russian vodka detected that a large amount of Russian vodka bearing its trademark was imported and sold in Vietnam. These fake Russian vodkas have directly caused a serious decrease in the business operations of the vodka producer.
Having conducted investigations, the company discovered that most of the fake Russian vodkas were imported into Vietnam by a company located in Hanoi. On December 2, 2010, the Anti-Smuggling Investigation Department of Vietnam Customs Office, coordinating with North Hanoi Customs Sub-department of the Hanoi Customs Department, detected a 20-foot container carrying 14,400 750ml bottles of vodka with the Russian producer’s trademark. Accordingly, the North Hanoi Customs Sub-department issued a decision on the temporary suspension of the container. This is one of the biggest counterfeiting cases in the foodstuff industry in Vietnam, with a value of US$13,000. The fake vodka does not only cause serious damages to the Russian vodka producer’s business in Vietnam, but also adversely affects customers’ health. It may be the first case that faces criminal penalties since the revision of Vietnam IP laws became effective in early 2010. The Russian vodka producer was advised by Vision & Associates.
Pham & Associates, on behalf of Seiko Advance Ltd, filed a petition to partially cancel the registration for the trademark Seiko in respect of the goods in Class 02 in the name of Seiko Holdings Corporation. As the ground for cancellation, the petitioner submitted a market survey result conducted by a relevant competent authority of Vietnam showing that the trademark Seiko has not been used in Vietnam by the registrant or its registered licensee in respect of the goods in Class 02 for consecutive period of five years following registration.
The trademark owner denied the allegation of the petitioner by submitting to the NOIP the evidence of use of the mark in the required period of time.
Vietnam trademark law does not regulate the specific issue of fulfillment of the use requirement of a trademark in respect of a certain goods, says Pham. Article 124. 5 (e) of IP Law of Vietnam provides that “advertising for sale of goods bearing the protected mark” is the use of a trademark.
In this connection, when assessing whether an advertisement of goods constitutes a genuine use of a trademark, one should consider whether there is a real commercial exploitation of the mark. In other words, whether potential consumers can purchase the goods bearing the registered trademark based on information on the advertisement. These questions have to be answered on a case-by-case basis.
In this case, the registrant submitted to the NOIP a cutting of an advertisement on newspaper informing the public that the Seiko trademark is being protected in Vietnam in respect of the specified goods and services, the contact information for any future purchasing is contained therein. The registrant reasoned that such use is the use of its trademark.
In a counter response, Pham & Associates asked the NOIP to reject the evidences submitted by the registrant with the argument that there is no real commercial exploitation of the mark in this case. Consumers cannot buy the goods bearing the mark because there is no goods bearing the mark offered for sales on the website as indicated in the advertisement. This advertisement is deceptive, aims at avoiding non-use cancellation action initiated by a third party. The case is still pending consideration by the NOIP.
The winners of the 2014 Asia IP Awards have been announced. Gregory Glass reports from Penang, where he catches up with the winners.
LONG RIVER INTERNATIONAL PATENT & TRAD.

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