One of the earliest laws in the Philippines involving trademark rights is Act No. 666 (Trademark and Trade Name Law of the Philippine Islands) which took effect on March 6, 1903. This system favoured actual use of a mark as the basis for registration. In 1946, while the Philippines was a territory of the United […]
Malaysia - Trade Mark Expedited Examination
In line with its policy of beefing up its Intellectual Property regime and encouraging entrepreneurs to register their IP rights, Malaysia has introduced expedited examination of trademark applications with effect from 15 February 2011. While a lot of ink has been spilt on highlighting the importance of registering one's trade mark, it would be imperative […]
Thailand - Still Register Your Licence Agreement
The recordal of a licence is mandatory under the Thai Trademark Act. However, in practice, the need to register is often willfully ignored by the trade mark owners, who find the requirement burdensome. With foreign companies, that lack of awareness is often the key reason behind non-compliance, exacerbating the risk of potential conflict inherent in […]
Philippines Mediation : A Win-Win Solution
The Intellectual Property Office of the Philippines (IPOPHL) implemented mandatory mediation proceedings in October 2010. This May, IPOPHL settled the long-contested case involving the famous local brand BINALOT, owned by Binalot Fiesta Foods (BFF), a dispute that had been dragging on since November 2007. BFF, a 14-year-old local fast-food chain, has more than 35 branches […]
Campomar v. Nike: Finale To A Long-Drawn-Out Saga
Nike International Ltd (NIL) and Campomar have been at loggerheads over the use of the mark NIKE in Class 3. The finale of this long saga was the recent decision of the Court of Appeal. Campomar SL v. Nike International Ltd, (2011) SGCA 6 (Feb. 28, 2011). NIL sought to register the mark NIKE in […]
Thailand - Nestlé Geometric Mark Rejected
The terms chocolate and malt drink immediately conjure up images of Nestlé’s popular beverage Milo. The drink has been so popular that the company often projects very large market share figures. Although the beverage itself and the term Milo have been used for over half a century, the evolution of the brand and the logo […]
Well-Known Marks : The Philippines Standard
Several international instruments, including the Paris Convention and the TRIPs Agreement, mandate that member states provide for a mechanism which affords protection to well-known marks. However, these international Instruments do not specifically set out in stone the exact mechanism which member states need to adopt. Consequently, there have been two significant approaches adopted by countries: […]
Thailand - Record Your Well-Known Mark
Thailand is one of the few jurisdictions that provides a mechanism for the protection of well-known marks. The mechanism is a relatively straightforward recordation, resulting in enormous savings (not just monetary but also in terms of time). The Trademarks Act confers protection for well-known marks, but lacks teeth. It was only in 2005 that the […]
Landmark Victory For India in Ponni Rice Trademark Battle in Malaysia
India has won a trademark row against a Malaysian company, which was granted registration for the word "Ponni" for rice, a premium variety developed and grown in India since 1971. In 2006, the local company was granted registration for the word "Ponni" in Malaysia for rice. The company had been importing ordinary rice from India […]
Philippines - Declarations of Actual Use: The Deadliest Deadlines
Trademark owners often find themselves confused (or worse, forget!) about the correct timings for filing the Affidavits of Use or Declarations of Actual Use in the Philippines. I.Affidavits of Use under the Trademarks Law, Republic Act No. 166. The Trademarks Law was enacted on 20 June 1947 under Republic Act No. 166. This is the […]