trademarks and their importance to digital economies of developing countries

LAWPLUS 1

Trademarks and Their Importance to

Digital Economies of Developing Countries

Kowit Somwaiya Managing Partner, LawPlus Ltd.

Interim Meeting of APAA

18 June 2016

UMFCCI, Yangon

www.lawplusltd.com

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Intellectual Property: A Tool for Development

• “In the age of the knowledge economy, the efficient and creative use of

knowledge is a key determinant of international competitiveness, wealth creation

and improved social welfare.”

• “An effective intellectual property (IP) system embedded within a national

strategy which anchors IP considerations firmly within the policy-making process

will help a nation to promote and protect its intellectual assets, thereby driving

economic growth and wealth creation.”

Kamil Idris

Former WIPO Director General

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Intellectual Property and Digital Economy

Efficiency-

Driven Economy

Innovation-

Driven Economy

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Digital Economy and Development

• The ‘Digital Economy’ is all economic activity mediated by software and enabled by

telecoms infrastructure.

• This includes core telecom services such as voice, messaging, data, and video.

• The goods and services within the digital economy can be broadly grouped as:-

• intrinsically digital – streaming video, e-books, computing services, Software-as-

as-Services (SaaS), social media (e.g. FB, line)

• substitutes for established equipment and services – virtual private

communications networks, security services and services delivered online (e.g.

accounting / other business processes, graphic design, software development,

SaaS, data analytics, knowledge-based outsourcing),

• marketing, sales, logistics, etc. of physical goods – e.g. Amazon, eBay, Alibaba,

Tarad.com, Pantipmarket.

Source: EABC, 2016 European Business Position Paper “Trade/Investment Issues & Recommendations in support of a Competitive Economy in Thailand”, 2016, P. 88

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• Technological changes.

• Driven by the Internet and digital technologies, the primary driver of economic

growth is based on the ability to innovate.

• No longer is competitiveness based on the ownership of land or the access raw

materials or capital.

• Thus, it is time for the change to a digital economy based on the

ownership/control of intangible assets which are exploited digitally.

• Digital Economy is the means of enabling participation by all in social and

economic enterprise, and also includes the role played by government in

developing infrastructure and services.

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Digital Economy and Development

• Digital economy offers developing countries enhanced opportunities for

accelerated integration into the global economy.

• Comparative advantages:

• accessing new international markets at low cost and with minimal

capital investment

• improving competitiveness and customer services

• realizing cost savings by reducing physical transactions and

overheads

• reducing administration costs

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:

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Source: EABC ICT Working Group, March 2015

The Digital Economy works as we see in three layers – built up from bottom to top.

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Efficiency-

Driven Economy

Innovation-

Driven Economy

IP Creation IP Protection

IP Commercialization

IP Enforcement

Efficient IP law/regulations,

IP offices, IP policies and strong government support

are needed.

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Trademarks and Digital Economy

• When a trademark is used in Digital Economy, it is potentially accessible

by viewers world wide.

• Businesses are realizing that their on-line identities are potentially

valuable resources and must be protected accordingly.

• Companies should know what constitutes a valid trademark and be

prepared to enforce their trademark rights over digital media.

• They must also be aware of methods to detect further infringement and

what remedies are available.

•G

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Trademarks in Digital Economies and Development

THAILAND PHILIPPINES

INDIA CHINA

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Trademarks in Digital Economies: THAILAND

1979

Patent Act

1991

Trademark Act

1992

Patent Act No. 2

1994

Copyright Act

1999

• Patent Act No.3

• Plant Variety Protection Act

2000

• Trademark Act No. 2

• Protection of Layout-Designs of Integrated Circuits Act

2002

Trade Secret Act

2003

GI Act

2005

Optical Disc Production Act

2015

• Copyright Act

No. 2 and No. 3

• Trade Secret

Act No. 2

2016

Trademark Act No. 3

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1931

Berne Convention

1989

Convention Establishing WIPO

2008

Paris Convention

2009

Patent Corporation Treaty - PCT

2016 (in process)

Madrid Protocol

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•G

• Backlog / Problems

• Delay in application/registration process

• Lack of strong enforcement of IP rights

• Low IPR awareness

• Not entirely in comply with international standard

• Recent Developments

• Trademark law amendment

• Acceding to Madrid Protocol

• Improvement of IP infrastructure

• Increase of the officials in charge

• National IP Policy Board

• National policy on change to innovation-driven economy (Thailand 4.0)

• More international cooperation

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DIP’s IP Development Plan for 2016

PATENT COPYRIGHT TRADEMARK

• Improve the procedure of

registration to be more

convenient and faster

• Support the accession to

the Protocol Amending

the TRIPS Agreement

(Doha Declaration)


the Hague Agreement

Concerning the

International Registration of Industrial Designs


the Marrakesh Treaty

• Solve the problem of collection royalty


the Madrid protocol

• Improve the criteria,

procedures and

timeframe for registration

to be more convenient

and faster

• Revise the official fees to

be in conform with current

economy

• Impose sanction on

Unauthorized refilling of a

genuine package bearing

a registered trademark

• Broaden the scope of protection to sound marks

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20 Years IP Roadmap to Innovation-driven Economy

2016

Enhancing

efficiency of

registration and protection of IP

Phase 1: 2017 – 2021

Improve Thailand’s IP system

to be more efficient to

facilitate IP owners by

reducing the procedure and

shortening the timeframe for getting registration of IP

Phase 2: 2022 – 2026

Use innovation and IP

assets as main tools for

creating added value to

goods and services and

increase economic

competitiveness of the

country

Phase 3: 2027 - 2031

Thailand’s IP goes beyond

boundary to international market.

IPRs of Thai entrepreneurs and

Thai exporters are protected in

the importing countries. Thai

economy is driven by innovation and IP.

Phase 4: 2032 – 2036

Thai people can create, innovate, own, and

commercialize IPRs with their full potential so

that Thailand can be considered as “high-

income country” and “developed country”

with stability, prosperity and sustainability.

Thailand is the source of production of

creative goods, IP-based industries and high

technologies.

IP

Enforcement

Creation

Protection Commercialization

Thailand is a stable,

prosperous, and

sustainable developed country

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INDIA CHINA

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Trademarks in Digital Economies: PHILIPPINES

•G

Outstanding Improvement

• The continued improvements in the Philippine intellectual property (IP) system

has again put the country among nations that were not cited under the United

States Trade Representative (USTR) Special 301 Watch List (2016).

• This is the third year that the Philippines is not cited in the said Special 301

Watch List.

“Business in the Philippines shows a growing appreciation of

the advantages provided by intellectual property rights:

creation, protection, registration, commercialization, technology

transfer, licensing, franchising, and enforcement.”

(WIPO Country Report)

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•G

What Philippines has been doing?

• Amendment of law and regulations

• Philippine Intellectual Property Policy Strategy

• More international cooperation

• Streamline its processes and encourage the use of IP

• Institutionalizing IP awareness, creation and utilization

• Human resource capability building

• Strong government support for SMEs

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•G

What Philippines has been doing? (continued)

• IPOPHL has adopted the Industrial Property Automation System (IPAS), an

integrated IP administration system which automates the processing of

applications, incorporating an electronic document management system for

the handling of electronic versions of relevant paper documents.

• In early 2015, IPOPHL became the 38th IP office worldwide to integrate

TMview into its trademark search facilities.

• IPOPHL has adopted the 10th edition of the Nice Classification for the

registration of trademarks.

• IPOPHL has also issued guidelines to aid trademark examiners in determining

the distinctiveness of nontraditional marks.

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Implementation of the IPR Action Plan on IPR Protection and

Enforcement

• enhance public education and awareness

• capacity building for relevant institutions

• enhancing border control measures in more regions

• speedy and quality disposition of IPR cases

• policy advocacy

• strengthen legal and policy environment

• sustain domestic and international partnerships

• strengthen coordinating mechanisms, and endeavor to fill in the gaps

on IPR enforcement operations.


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INDIA CHINA

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Trademarks in Digital Economies: INDIA

•G

“Certain countries, such as India and Malaysia in the Asia-Pacific region, …

have demonstrated relatively rapid uptake of digital technologies and

corresponding growth in their digital economies.”

“While the reasons are manifold, the governments of countries that exhibit

greater digital development have focused on training and export of information

technologies, telecommunications and infrastructure development, and legal

and policy regimes that promote the protection of intellectual property and are

therefore conducive to e-development.”

Source: Intellectual Property on the Internet: a Survey of Issues (WIPO)

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•G

• The Government of India undertook a series of steps, to conform India IP

legislation to acceptable international standards.

• The regulations relating to all forms of IP have been amended or reissued in

recent years, mainly in response to India's accession to the WTO.

• India’s well-established framework for protecting intellectual property rights has

been an important inducement to business investment.

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• Here are some of the developments in IP legislation in India.

Trademark law brought at par with international practices

Protection to geographical indications provided

Copyright law modified

Patents law more aligned with TRIPS

Protection for plant varieties and rights of farmers established

New designs law

Integrated Circuits Provisions adopted

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• Trademark law brought at par with international practices

India replaced the Trade and Merchandise Marks Act, 1958, with the Trade Marks Act, 1999.

Service marks, for the first time, made protectable through registration.

The definition of "trademark" now includes graphic representations, shapes, packaging and

combinations of colors, thereby widening IPR protection.

The procedure for registration of trademarks expedited.

In addition, only a single application need now be filed for registration of a trademark in

different classes.

The 1999 Act also provides for the classification in conformity with recognized International

Classification of Goods and Services.

The period of registration and renewal has been increased from seven to ten years.

The definition of "trademark infringement" has been broadened to give protection beyond the

use of identical/deceptively similar marks in relation to goods for which they are registered.

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• Trans-border reputation recognized

Indian courts first recognized the concept of trans-border reputation in NR Dongre v Whirlpool

Corporation (1995). A foreign entity can now enforce trademark rights against an Indian entity if it

can demonstrate that its trademark enjoys trans-border reputation by way of documentary evidence

(e.g., magazine and newspaper articles, television coverage, online presence).

• Customs recordal efficiently used

The Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 empower Customs to

seize, forfeit and destroy counterfeit goods that have been imported into India. A rights holder may

register its trademark, copyright, design or patent with Customs. The recordal process can be done

online and takes approximately three to four working days to be processed.

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• Most recent development: India’s first National IPR Policy

• Approved by the Union Cabinet on 13st May 2016

India’s first

National

IPR Policy

Bring administration and implementation of all

IP-related laws under the Department of Industrial Promotion and Policy (DIPP)

Amend existing IP laws to bring clarity,

simplicity, transparency and time bound process

Create awareness about economic, social and cultural benefits of IPRs in India

Perform a comprehensive IP audit across various sectors

Expand the ambit of Traditional Knowledge Digital Library for further R&D

Increase the manpower and enhance ICT infrastructure

Explore the possibility of expedited

examination of patent applications to promote manufacturing in India

Provide incentives to promote R&D

Promote infusion of funds to public R&D as a

part of a corporate social responsibilities of companies

Strengthening the enforcement mechanism

Develop IPR expertise in industry, academia,

legal practitioners, judiciary, IP users and civil society

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INDIA CHINA

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Trademarks in Digital Economies: CHINA

•G

“Strengthening trademark registration and application procedures, and

enhancing protection mechanisms and management systems is of vital

strategic importance if China is to facilitate and maximize business

development, sharpen its competitiveness and become an innovation-oriented

economy.”

Mr. Zhou Bohua,

Minister of the State Administration for Industry and Commerce (SAIC), China

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What China has been doing?

• Mutually supportive and parallel administrative and judicial protection systems that are

distinctively Chinese have taken shape.

• The legal system, which conforms to international rules and reflects China’s current

realities, places a high priority on trademark issues.

• Following the launch of the national IP strategy, the SAIC has worked tirelessly to

implement effective trademark strategies.

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Some remarkable achievements:-

• The SAIC has reduced the backlog in unprocessed trademark applications resulting from the growing

demand for trademark rights. It now takes less than a year to complete the trademark registration

process in China.

• Greater emphasis has been placed on protecting the exclusive right to use a registered trademark. This

has created fertile ground for economic development.

• Very solid work has been done on trademarks in relation to agricultural products and the use of

geographical indications.

• Positive consideration has been given to using registered trademark rights as assets to secure finance

for business, taking the use and management of trademark rights to a higher level.

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The New Trademark Law

• The long-awaited amendment to the People’s Republic of China (PRC) Trademark Law was finally

passed and come into effect from 1st May 2014.

• Improved Efforts to Counter Infringement

– Broader scope of bad-faith clause

– For a new trademark application, examination must now be completed within nine months.

– Appeals against the rejection of a trademark application must be completed by examiners within nine months, with

the possibility of extension for another three months under special permission.

– Sound marks, can now be protected.

– Multiple-class application is allowed.

– E-filing is available.

– In trademark disputes, anti-counterfeiting actions and civil or administrative suits, the trademark owner may apply

for recognition of well-known trademark status.

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Intellectual Property and Digital Economy: WRAP-UP

Efficiency-

Driven Economy

Innovation-

Driven Economy

IP Creation IP Protection

IP Commercialization

IP Enforcement

Efficient IP law/regulations,

IP offices, IP policies and strong government support

are needed.

LAWPLUS 35

Source: EABC ICT Working Group, March 2015

The Digital Economy works as we see in three layers – built up from bottom to top.

LAWPLUS 36


• Innovation is crucial to competitive edge, sustainability and relevance. That

makes Intellectual Property (IP) policy an increasingly important tool for

stimulating economic growth.

• IP can also act as a barrier to innovation and creativity if not properly managed

where it is too expensive to access knowledge, where it is too complicated to use

or where it is goes too far in obstructing market entry.

• Enterprises are required to re-look their approach to business – sales, customer

service, distribution and production.

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Trademarks and Digital Economy

• When a trademark is used in Digital Economy, it is potentially accessible

by viewers world wide.

• Businesses are realizing that their on-line identities are potentially

valuable resources and must be protected accordingly.

• Companies should know what constitutes a valid trademark and be

prepared to enforce their trademark rights over digital media.

• They must also be aware of methods to detect further infringement and

what remedies are available.

•G

LAWPLUS 38


• Digital Economy offers developing countries enhanced opportunities for accelerated

integration into the global economy. In particular, there are comparative advantages for

accessing new international markets at low cost and with minimal capital investment, for

improving competitiveness and customer services, and for realizing cost savings by

reducing physical transactions and overheads.

• However, by opening up new marketing channels, the digital economy offers wider scope

for both the legitimate and counterfeit use of trademarks.

• The challenge is to develop a system which is flexible to technology, consumer demand

and particularly for developing countries allows for affordable access and development

which meets the needs of country.

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Q&A

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