In April, the Intellectual Property Office of the Philippines (IPOPHL) issued a series of office orders amending various trademark rules involving the Declaration of Actual Use (DAU) and (Paris) Convention priority applications. Declaration of Actual Use The requirement to file a third-year and a fifth-year DAU will also apply to international registrations designating the Philippines. […]
Criminal Enforcement of Trademark Rights in Singapore and Malaysia
At a time when legal costs are escalating, criminal enforcement measures in Singapore and Malaysia are remarkably easy and affordable. Gladys Mirandah and Prithipal Singh report from Singapore. A trademark owner’s fight against the unauthorized use of its trademark does not end with registration of the trademark. Registration only confers upon the trademark owner the […]
Vietnam Franchising: Anticipate the Steps to Opening Up for Business
With a cold, hard and long recession in the west it is no wonder that franchisors are excited about new and emerging markets in ASEAN countries. Vietnam in particular has an attractive consumer pool with a population of 86 million, half of which are below 25 years of age. Although in some countries (such as […]
ASEAN : Changing Its IP Landscape for Growth
The Intellectual Property Rights Experts Group of the Asia-Pacific Economic Cooperation (APEC) recognizes that intellectual property rights protection and enforcement is a key factor for promoting foreign trade and investment, as well as boosting economic development. Enjoying a growth rate of 4.5%, the Asia-Pacific region has been identified as the fastest-growing region in the world […]
Indonesia - KOPITIAM Generic or Distinctive?
At the center of a recent controversy in Indonesia was the mark KOPITIAM, which literally means “coffee shop.” KOPI means coffee in the local language, while TIAM is the Hokkien dialect for a shop and is widely understood as such in the country. Undoubtedly, registration of this term for a coffee shop would have been […]
PARK REGIS And ST. REGIS To Coexist In Singapore
The High Court of Singapore recently decided a dispute involving the marks ST. REGIS and PARK REGIS & Design used for services in Class 43 by Starwood Hotels & Resorts Worldwide, Inc. and StayWell Hospitality Group Pty Ltd, respectively. The matter came to the Court on an appeal filed by StayWell against the decision of […]
Thailand - When trade marks must be associated
Having a single-class system, a trade mark owner seeking registration in Thailand for the same mark in different classes will be required by the Trade Marks Registrar to “associate” its marks. Section 14 of the Thai Trade Marks Act states that the Registrar may order an applicant of similar or identical marks, relating to goods […]
Indonesia Supreme Court Issues New Rules On Search Warrant And Preliminary Injunction (Provisional Decision)
The Supreme Court of Indonesia has issued Regulation No. 5 of 2012 laying down the requirements and procedure for obtaining a Provisional Decision on Intellectual Property Rights Violations. A Provisional Decision in Indonesia has a similar effect as a Search Warrant and Preliminary Injunction against alleged infringers. The new rules took effect on 30 July […]
Cancelling Bad Faith Registrations in Thailand
Ever so often, a trademark owner finds itself unpleasantly surprised when it discovers that its mark has been registered by unauthorized parties. Under Section 67 of the Trade Marks Act, a trademark owner may petition the Central Intellectual Property and International Trade Court (CIPITC) to have the unauthorized registration cancelled within five years from the […]
Thailand - Precedent On Descriptiveness And Suggestiveness
The issue of determining whether a mark is descriptive or merely suggestive of the goods sought to be protected has always been a debated area in Thailand. Though not many precedents are available, it was recently addressed by the Supreme Court in Liebherr-International v Department of Intellectual Property. The case before the Supreme Court required […]