KASS IP exposé - August 2013 by KASS | The IP Experts

The IP Experts

IP expose

Malaysia - Singapore - Indonesia

Your Professional Guide in the Intellectual Property MazeSM

INTELLECTUAL PROPERTY NEWS UPDATES

BIG

THANK YOU!

We are truly grateful for the recognition we have received recently and would like to sincerely thank everyone for the continued support and for contributing to these recent accolades.

AUGUST 2013 HIGHLIGHTS pg

WORLD TRADEMARK REVIEW 1000 “There is nothing weak about KASS; it is highly organised and the work it produces is always of a very good quality.” A specialist consultancy, it understands clients’ IP assets better than anyone and is favoured for the strategic insights it can provide. The dexterous team monitors files with extreme care and diligence, and never misses a deadline, ensuring that its clients’ trademarks get the airtight protection they require. With branch offices in Singapore and Indonesia, it can advise on a regional basis, lending it further appeal in this competitive region. IAM PATENT 1000: THE WORLD'S LEADING PATENT PRACTITIONERS IP ensemble KASS International tenders “nuanced and tailored” prosecution and commercialisation services to a diverse clientele, comprised of both foreign and domestic entities. At the centre of the “first-class” unit is founder P. Kandiah, a well-established figure in the Malaysian IP community. His “wise advice informed by decades of high-quality, varied experience” sets him apart. CORPORATE INTL LEGAL AWARDS WINNER 2013: IP LAW FIRM OF THE YEAR IN MALAYSIA

Claiming patent rights to genetic material

We look forward to providing you with exceptional and efficient solutions for all your IP needs today, tomorrow and in the years to come.

...................................................................................................

Claiming patent rights to genetic material

Traditionally patent rights were claimed only for non-living objects, as long as the objects met three universal criteria, these being the features claimed were novel, involved an inventive step and were industrially applicable. The patent system faced a challenge in 1980 when Prof. Chakrabarty sought patent rights for modified bacteria, which were used to remove hydrocarbon oil spills in water. The US Patent Office initially refused to grant a patent for the man-made bacteria, arguing that it was not an inanimate object, but a living form and that patents cannot be granted for life forms. On appeal, the US Supreme Court held that “anything made by man under the sun is patentable subject matter” under US law and so a patent was granted to Prof. Chakrabarty. This landmark decision of the US Supreme Court paved the way for the rapid development of the biotechnology industry in the US. Many researchers and start-up companies, enthused by the promise of patent rights to new forms of microorganisms and microbiological processes, invested in research in biotechnology leading to the rapid growth of biotechnology in the US.

www.kass.com.my

Isle of Man wins ThreeLegged Race

BY P. KANDIAH

The US Patent Office was faced with another challenge in 1984, when Harvard University applied for a patent for a genetically modified mouse which was highly susceptible to cancer. The laboratory mouse was widely useful in animal testing practice where researchers wanted to test whether certain chemicals such as drugs or solutions applied on the skin (perfumes, skin lotions, moisturizers, etc.) were carcinogenic.

Weird Trademarks: Fact or Fiction?

Thinking of investing in a foreign franchise?

Other Updates:  IP, Parody Style!  Success story spotlight – MMK Spices Sdn Bhd

INNOVATIONS DECIDE sm

IP exposé

AUGUST ’13

The genetically altered mouse was novel, had an inventive step and was industrially applicable. Here was a higher life form for which a patent was sought. The US Supreme Court, based on its earlier decision in Diamond vs. Chakrabarty, allowed the grant of a patent for what is now known as the Harvard OncoMouse. This decision was controversial. Some countries still refuse to grant patents to the OncoMouse, arguing that higher life forms are not patentable subject matter. From larger life forms, the pendulum swung back in the US to the claiming of patents for genetic material. Myriad Genetics, Inc. (“Myriad”) a US company, obtained several patents after discovering the precise location and sequence of the BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of breast and ovarian cancer in humans. This knowledge allowed Myriad to determine the genes’ typical nucleotide sequence which in turn enabled Myriad to develop medical tests useful for detecting mutations in these genes in a particular patient. If valid, Myriad’s patents would give Myriad the exclusive right to isolate an individual’s BRCA1 and BRCA2 genes. The Association of Molecular Pathology and others filed an action in the Courts to invalidate Myriad’s patents. The District Court (the court of first instance) held that Myriad’s patent claims were invalid as they covered products of nature. On appeal to the Federal Circuit (Court of Appeal), the patents were held valid. Then on appeal to the US Supreme Court, another landmark decision was delivered by the highest court of the US. The Supreme Court held that Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes. It further held that Myriad did not create or alter either the genetic information

encoded in the BRCA1 and BRCA2 genes or the genetic structure of the two genes.

Although Myriad found an important and useful gene, it was – though groundbreaking and innovative – by itself a discovery and nothing more, and so does not qualify for a patent. The Court reiterated that extensive effort alone is insufficient to satisfy patentability requirements. The patents as claimed were held invalid. Now, what is the situation in Malaysia under our own Patent laws and practice? Finding bacteria in nature or in the wild which is useful for some industrial applications is by itself not patent eligible, as the bacteria present in the wild is a product of nature. But if there is human intervention, for example by producing a pure strain of the bacteria, that strain would be patentable provided there is some industrial applicability of the bacteria. Merely discovering a strain of bacteria with no useful industrial application (no matter how much effort and costs were expended in the discovery) is not patentable. Chakrabarty’s bacteria would qualify for a patent in Malaysia as the bacteria would be a man-made living microorganism. The Malaysian Patents Act provides for the grant of patents for man-made living microorganisms, provided the said microorganisms are novel, involve an inventive step in its production and have industrial applicability.

P U B L I S H E R & P R I N T E R

IP Exposé is published by KASS International Sdn Bhd Suite 8-7-2, Menara Mutiara Bangsar, Jalan Liku, Off Jalan Riong, Bangsar, 59100 Kuala Lumpur, Malaysia T (603) 2284 7872 F (603) 2284 1125 E ipr@kass.com.my Regional Office KASS Regional IP Service Pte. Ltd. 190 Middle Road, #03-21, Fortune Centre, Singapore 188979 T (65) 6338 1323 F (65) 6334 3127 E ipr@kass.com.sg Indonesia Office PT. KASS Indonesia IP Services 46th - 50th Floor, Wisma 46, Jl. Jend. Sudirman Kav. 1, Jakarta 10220, Indonesia T (62) 21 574 8822 F (62) 21 574 8888 E ipr@kass.com.sg

This newsletter is intended only to provide an alert service on matters of concern or interest to readers and should not be treated as a legal advice on the issues discussed. For specific queries on IP matters, please contact us for further assistance. Note: The trademarks and images used in this newsletter belong to their respective owners. KASS does not claim any proprietary rights whatsoever; they are used solely for educational purposes.

IP Saudi Arabia and Iran Accede to the PCT Saudi Arabia will officially become the 147th member state of the Patent Cooperation Treaty (PCT) with effect from 3rd August 2013. This leaves Kuwait as the only country in the Gulf Cooperation Council (GCC) that has yet to accede to the PCT. Iran (which is not a GCC member) ratified the PCT shortly after Saudi Arabia and will be bound by the PCT on 4th October 2013. Consequently, Saudi Arabian and Iranian nationals and residents will be able to file patent applications under the PCT, and PCT applicants worldwide will have the option to file national phase applications in Saudi Arabia and Iran. Read more at www.wipo.int

IP exposé

AUGUST ’13

Isle of Man wins Three-legged Race BY CARLA MONINTJA Many Indonesians love to consume health drinks, from drinks with claims of boosting stamina and concentration to those that help release body heat. Each type of drink can be found in a variety of different brands. Among the brands of health drinks in the Indonesian market, the most popular is Cap Kaki Tiga (translated to mean “Three Legs Brand”). It is claimed that consumption of this health drink releases body heat and cures ulcers. In Indonesia, the brand’s reputation as a health drink is publicly acknowledged. For years, Cap Kaki Tiga has been recognized as the leader of its market, receiving awards for customer satisfaction. If you suffer from excess body heat or a sore throat, it would not be uncommon if your Indonesian friends suggested you consume Cap Kaki Tiga. However, the glory days of Cap Kaki Tiga were not to last forever. The story began in March 2013 when Russel Vince, a UK citizen, filed a cancellation lawsuit against the trademark registration of Cap Kaki Tiga & Logo at the Central Jakarta Commercial Court. The lawsuit was based on the similarity between the logo of the Cap Kaki Tiga trademark and the national emblem of Isle of Man (see representations below).

The Commercial Court proceeded with the cancellation lawsuit filed by Russel Vince. During the trial, two witnesses were questioned, and both claimed similarities existed between the logos. Russel Vince’s attorney also referred to paragraph 3(b) of Article 6, Law No. 15 Year 2001, which stipulates: (3) An application shall also be rejected by the Directorate General if the trademark: (b) is an imitation or resemblance of a name or abbreviation of a name, flag, coat of arms or logo or emblem of a state or a national as well as international agency, except with written approval of the relevant authority; In their decision, the panel of judges held that the Cap Kaki Tiga logo was visually and conceptually similar to the national emblem of the Isle of Man, which showed bad faith on the part of the owner of Cap Kaki Tiga. The Commercial Court, for the most part, ruled in favour of Russel Vince, agreeing to the cancellation of all variants of registered Cap Kaki Tiga mark, namely: a. b. c. d. e.

Cap Kaki Tiga No. IDM000241099 class 01, Cap Kaki Tiga No. IDM000241100 class 02, Cap Kaki Tiga No. IDM000241093 class 03, Cap Kaki Tiga No. IDM000241102 class 04, and Cap Kaki Tiga No. IDM000241098 class 05.

However the Court rejected his request for an order to the Indonesian manufacturer to cease the distribution of all Cap Kaki Tiga products. The Wen Ken Group, owner of the Cap Kaki Tiga brand, plans to appeal the decision.

Seeing double? The Cap Kaki Tiga logo (left) and the triskelion on the flag and coat of arms of the Isle of Man (right)

What we can learn from this case is that it is always important to look at all aspects of your intended trademark with an IP consultant to get accurate advice on the dos and don’ts relating to your trademark and its registration prior to filing an application to avoid hassle in the future.

Weird Trademarks: Fact or Fiction? BY VINCENT TEH

I have always been a fan of tabloids. No, not for my daily news updates, but for the oft hilarious headlines. If you believe everything the tabloids say, the world would have ended at least 30 times already; Elvis is alive and travelling around the world, visiting obscure unknown places like Blaenavon, Wales; and Obama was born in Krypton to Jor-El. In recent years, even developments in the IP field (especially in the area of trademarks) have been appropriated by the press and spun into sensational scandals of corporate or individual megalomania. In this article, I will scour the great rolling plains of the World Wide Web in search of the weirdest news on trademarks and in doing so I hope to dispel some of the myths and fictions that have plagued the online community. INNOVATIONS DECIDE sm www.kass.com.my

IP exposé

AUGUST ’13

Headline: Patent Office Agrees to Facebook's "Face" Trademark It’s hard to believe that Facebook could actually lay claim to the word “face”. But believe it or not, Facebook does own the trademark “face” and it’s registered for use on telecommunication services. While this will not prevent the public from using the word “face” in general, it does mean that Facebook is in a position to challenge the use of the word “face” by other websites, especially if they were to use “face” as a prefix (e.g., “FACEPAGE”, “FACENOTE” or “FACESCROLL”). After all, what would the world be if the word “face” was the sole property of Facebook? John Travolta and Nicholas Cage would have acted in “VISAGE/OFF”. Templeton "Faceman" Peck of the A-Team would be Templeton “Countenanceman” Peck.

Headline: Apple Trademarks the Shop Apple Inc. applied to register the design and layout of its retail shop as a trademark at the United States Patent and Trademark Office (USPTO). After several rejections by the USPTO, Apple finally prevailed and the design of its stores was finally registered in April 2013. Its controversial trademark registration covers the specific design and layout of a retail store which includes “a clear glass storefront surrounded by a panelled façade” and “rectangular tables arranged in a line in the middle of the store parallel to the walls”. If it sounds like Apple has registered what seems to be a blue print for just about any shop, then you’re not too far from the truth. It’s registrations like these that perpetuate the idea that there’s no limit to Steve’s megalomaniac tendencies, even from beyond the grave.

Headline: Gareth Bale “owns trademark” to his goal celebration According to several newspapers, the Tottenham winger has successfully registered his famous goal celebration, a heart-shaped hand gesture known as the “Eleven of Hearts” with the UK IP Office, thus depriving all lovebirds from expressing their love to each other in a non-verbal way. The reality is Mr. Bale has in fact registered a logo (a drawing of two hands joined together by the index fingers and the thumbs making a heart shape, with the number 11 appearing in the middle of the heart) for use on jewellery, bags, clothing and shoes. What that means is that the logo is protected, and Mr. Bale may be able to stop other traders from selling the above-mentioned products with an identical or substantially similar logo attached. As for the hand gestures, fear not voiceless cupids, your saccharine sweet hand gesture is still free for all to use.

Headline: Star trademarks “unibrow” Unibrow /yoo-nuh-brou/, noun: A pair of eyebrows which meet in the middle, forming a long swooping line of hair. A facial feature deemed unsightly by most. In most societies, having a unibrow is likely to make you the butt of jokes among your peers. However, unfazed by the stigma and ridicule, NBA player Anthony Davis was reported to have registered his fertile supercilium as a trademark. Further, Davis was reported to have said: “I don’t want anyone to try to grow a unibrow because of me and then try to make money off of it.” Naturally this caused quite a brouhaha among the unibrow community (consisting mostly of Cyclopes). However, the reports have proven to be erroneous once again. What Davis registered were the slogans “Fear the Brow” and “Raise the Brow” for use on aftershave (the irony), cosmetics, exercise kits, clothing, shoes, charitable services and entertainment services. So if you are a proud owner of a unibrow and you are ostracized or ridiculed for it, you can at least take solace in the fact that your omission to remove the middle part of your unified brow is not an act of trademark infringement. Incidentally, did you know that in certain parts of the world, having a long swooping conjoined eyebrow may be viewed as an attractive facial feature signifying purity women and virility in men?

Our constant appetite for scandal means that tabloids will continue to churn out stories like these day in, day out until our world finally comes to an end (no doubt after several more false alarms and prophesies). But fact or fiction, this does show the importance of trademarks in business and the lengths that corporations or individuals will go to monopolise it.

IP exposé

AUGUST ’13

Thinking of investing in a foreign franchise? BY GEETHA K. • •

The franchise industry in Malaysia has shown positive development in the past two decades. As more and more businesses expand rapidly around the world through the franchising system, and with Malaysian entrepreneurs getting in on the act, it is important that they know what they are getting into. So, what are the IP considerations that a master franchisee should look into before embarking to invest in a foreign franchise? Master franchisees who were asked this question typically raised more questions in response, such as “Is the brand in the franchise well-known in the country or territory of the franchisee?” and “If not, does the franchise have a unique selling point (USP) that will generate traffic to its outlet?” Not surprisingly, these answers reflect the IP rights in the franchise industry. With a well-known brand, the franchisee need not exert much effort in introducing the brand to the masses. The public would trust and accept the brand more readily as they would be assured of the quality of the products or services, and this in turn encourages them to frequent the business. Time and money can then be invested by the franchisee in other elements in the business, perhaps the construction cost, cost of goods, staff salary, and so on. In contrast, if the brand was unknown, it would be a risky affair involving the investment of substantial effort, time and money. The franchisee cannot anticipate the response towards the franchise, whether it will be just another average brand or an astounding success. A franchise with a USP reduces the risk involved in introducing an unknown brand into the market. The way these issues are related to IP rights is that the brand is typically the trademark of the franchise while the USP could be various aspects within the business that are uncommon in the industry. The unique elements and the trademark of the franchise are only exclusive to the franchisor and franchisee if they are protected as IP rights in territories where the business is carried out. In the F&B industry, for example, the following elements can be protected by the franchisor: • • • • • •

Name of restaurant as a Trademark Staff uniform as a Design Menu card and menu items under Copyright and Trademark (if the menu items have a unique name) Recipe as Trade Secret Shape of food items as a Design Patterns on plates and design of cutleries as a Design

Cooking apparatus or machinery as a Product Patent or Process Patent Interior design or restaurant layout as a Design

If we take a different industry, say the education industry, the elements that can be protected by the franchisor are: • • • •

Name of kindergarten/nursery/math class as a Trademark Staff uniform as a Design Reading materials, textbooks, posters under Copyright Interior design or venue layout as a Design

It can be said that the more IP rights the franchisor has protected/registered, the lower the risk of the franchise being copied and the more exclusive the franchise will be. Different franchises have different IP rights. Some may have new products or processes that can be patented by the principal/franchisor; some have published material or recordings that can be protected through copyright or trademark (e.g., Franklin Covey, Anthony Robbins). The IP rights in a franchise are usually owned by the principal, and the master franchisee will merely own the licenses to use the rights in the area and time period agreed on by both parties. This can be a major drawback to franchisees as once the franchise agreement ends, the franchisee will not have any rights to use the IP rights in the business regardless of the monies expended to build the business in the specific region. However, if the franchisee creates any new IP during the course of the franchise period, the rights should be jointly owned by both parties. But whether or not the franchisee has rights depends on the original franchise agreement entered into by both parties at the start of the relationship. With franchises, if a third party infringes the IP rights in the franchise, the principal will need to be informed of the infringement by the franchisee as soon as possible. The principal will then initiate the litigation in Court against the infringer. In some cases, the franchisee will also be a party to the legal suit and will have a share of the damages incurred as a result of the infringement. Once they have assured that the IP rights in the franchise are properly taken care of, master franchisees have to then consider the finances needed to fund the purchase of the franchise. But having taken a sufficient amount of your time here (thanks for sticking till the end!), we shall delve into the financial considerations that franchise purchasers need to consider another day. Stay tuned!

INNOVATIONS DECIDE sm www.kass.com.my

IP exposé

AUGUST ’13

IP, Parody Style! BY STEPHANIE MICHAEL (To be sung to the tune of Beyoncé’s “If I were a boy”) “If I were the boss Work will start on Tuesday We will end the week on Thursday and everyday will be half day If I were the boss I think I could understand How it feels to work on budget And give a raise of 20 cent Hang out with the girls And be hard on the guys Might dispatch me riding Harleys Our trips will be to Bali If we bankrupt I will break down and cry…”

When Beyoncé lamented in her song “If I were a boy” about the perils women face when dating a bottom instead of a real man, it is highly doubtful that she could have ever imagined that her song would inspire the creation of a rather chauvinistic comedic tune about incompetent bosses. And whilst this parody, sung by the ever-so-creative morning crew of the “hitz.fm” radio station in 2009, may have helped lift spirits and reduce road rage during the infamous Malaysian rush hour traffic, one can’t help but think that Beyoncé and her record label, Columbia Records, wouldn’t have been quite as amused. So what then? Did the parody rile Sasha Fierce enough to slap a copyright infringement lawsuit on our poor unsuspecting comedic duo, JJ and Ean? And on that note, what exactly are parodies, and how can anyone possibly create them without trespassing on another’s IP rights? Parodies have always been a bit of a dilemma in the IP realm, especially in recent times, as they seem to have grown immensely popular all over the world. A parody is an imitation (usually humorous and exaggerated) of a particular literary or musical work, or the style of a writer, artist or genre. The content in parodies can range from mildly amusing to hilariously funny, and some parodies are scandalous enough to invoke horrified hand-over-mouth, bug-eyed trauma amongst its audience. Depending on the creativity (or depravity) of its author, parodies can take many forms and can poke fun at pretty much anything. For instance, as the title of this article sneakily suggests, the song “Gangnam Style” by Korean singer Psy was the subject of so many parodies, which spread like a global pandemonium over the past year, that this song is now possibly (in this writer’s opinion at least) one of the most overplayed and clichéd songs of all time. And all it took to incite such a reaction was a catchy tune and dance moves which should have been restricted solely to equestrian events.

“Listen listen listen” ads by Nando’s, Digi and Logitech

On a local front, recently individuals and large corporations alike had a field day turning the sentence “Listen Listen Listen” into tongue-in-cheek advertisements, video clips, and even musical

dance remixes. Humorous as they may be, parodies can have quite a significant impact on the reputation and public perception of their targets, and in this case, turn a “champion of animal problems” into an overnight sensation, albeit for all the wrong reasons! The interesting thing about parodies is that they tend to fall into a loophole in the enforcement of a few types of IP rights, such as copyright and trademark rights; that being the need to be an identical copy (for copyright) and the requirement of a likelihood of confusion (for trademark). A “good” parody brings to mind the subject which it mimics, but contains a sufficient degree of originality so as to clearly differentiate the parody from the original work. If people are able to identify that the parody is merely a humorous interpretation of an original work or subject and are easily able to distinguish between the two, then there is no risk of confusion. Parodies are also generally afforded the defense of “fair use” or “fair dealing” in many countries. This defense is usually against copyright infringement, as is the case in Malaysia, and in a couple of other countries, it is a defense for trademark infringement too. This defense is significant, as in reality, most IP owners will never consent or agree to another person using their protected work to create something which pokes fun at it or them! It is, however, important to know that the “fair use” defense is a limited one, and the courts are cautious in allowing it, usually considering several factors including the purpose of the use, the nature of the work, the amount used and so forth first, on a case-by-case basis.

The North Face vs. The South Butt and Butt Face

However, in some countries, there is an added risk of trademark infringement for parodies of famous marks, due to the law of trademark dilution. Trademark dilution is a concept which allows the owners of famous trademarks to prevent others from “diluting” or lessening the distinctiveness of their marks through unauthorized use. An example of this was seen in the US, when the well-known outdoor apparel company, The North Face Apparel Corp, initiated legal action against parodies of their trademark “The North Face” against The South Butt, LLC, for usage of the trademark “The South Butt” in 2010. This dispute was subsequently settled, with the proprietor of “The South Butt” agreeing (amongst others) to stop selling clothing under this mark, but in 2012, the owners of The South Butt, LLC once again had their posteriors kicked for using a new trademark called “The Butt Face”. At the end of the day, whether a parody is light-hearted, offensive, controversial or just plain cheesy, just like how it is pretty much impossible not to laugh when a kid points to a condom in a store and loudly says “What’s that mom?”, so long as people are entertained at the expense of others, parodies will be a part and parcel of our lives. It might, however, be wise to know what lines cannot be crossed first before indulging in some comedic fun, otherwise, a clever, playful mimicry might just make a mockery out of you!

IP exposé

Success story spotlight

AUGUST ’13

Mohamed Shakir, Mohamed Gani, Mohamed Kassim Azari @ Azhar, MMK Spices Sdn Bhd

MMK Spices was established in August 2002, but the family owned business has been around for three generations. The previous company was set up by the founding fathers way back in 1942, and was changed from a partnership into a Private Limited (Sdn Bhd) 11 years ago by the younger generation, Azhar, Shakir and Gani, who have been managing the company ever since. Clearly born with the family business in their genes, these three men don’t just form MMK Spices’ management team, they are also directly involved in the product development and conceptualization to continuously grow the company, providing customers with a wide range of spices, edible nuts, dhalls and curry powder under the “Spiceking” brand.

Mohamed Gani a/l Basheer Ali, MMK Spices Sdn Bhd

Mohamed Kassim Azari @ Azhar, MMK Spices Sdn Bhd

Aware of the importance of brand management and their intellectual assets from the outset, the management team registered their “Spiceking” trademark in Malaysia. They eventually expanded their business to neighbouring countries, with Singapore as their first export market. It was here that they received a “wake-up call” when one of their Singaporean customers asked if he could register the “Spiceking” trademark in Singapore. From then onwards, not only have they registered “Spiceking” in Singapore, but they have also registered the trademark in China, Egypt, Indonesia, Pakistan, and more. They began working with KASS following the recommendation of their good friend, Mr. Sundram of Raviraj Sdn Bhd, who made their choice easy when he told them, “Others may register the brand on your behalf; that is not an issue at all as anybody can do it, but when you have a problem KASS is the one who can solve the problem for you no matter how big your problem is.”

“

“Business is a highly competitive field. Whatever you do, don’t be generic. Distinguishing your business from others is a must and branding is one of the tools available to you to do this. Invest in your brand, trust in your brand and work hard for your brand – sooner or later the brand will start working for you!”

Now well-established in Malaysia and Singapore, MMK Spices’ export market also includes Japan, Africa, Thailand and Brunei. Shakir notes that investing in intellectual assets is a positive move as “it shows you trust your brand and people will ultimately associate the person behind the brand to the values the brand brings to them, and that can only benefit the business in the long run.” With strong heads on their shoulders and the passion to keep their business going for generations to come, we at KASS congratulate them on their achievements thus far and look forward to supporting them on their journey.

”

– Mohamed Shakir bin Basheer, MMK Spices Sdn Bhd

Around the region in an IP minute

THAILAND

BRUNEI

VIETNAM

Staying Put on Priority Watch List

No Longer on US Watch List

Fake Beer Ring Busted

With the release of the annual Special 301 Report by the US Trade Representative recently, it is little surprise that Thailand is on the Priority Watch List for the 7th year running. Despite the Thai Government stepping up its efforts to fight IP rights violations, the problem has not seen any improvement in the past 5 years. Thailand is joined by 9 other countries on the list, including South East Asian neighbour, Indonesia.

Brunei has made huge leaps in the national protection of their IP rights in the past year, with the establishment of the Patent Registry Office (which has since evolved into the Brunei Darussalam Intellectual Property Office (BruIPO), set up on 1st June 2013), major crackdowns on piracy, and the incarceration of the owner of the largest counterfeit CD and DVD emporium in the country. For these and other positive developments in the protection and enforcement of IP rights within the country, Brunei has been rightfully removed from the Watch List in the US Trade Representative’s Special 301 Report.

In a crackdown on counterfeit beers, a Vietnamese gang which had been mixing cheaper local beer with genuine Heineken and Tiger beers in a 50:50 ratio and delivering them to food outlets in the Tan Binh District of Ho Chi Minh City has recently been arrested following a raid that saw the fake beers being seized.

In the report, the US once again calls for Thailand to take serious “enforcement action against widespread piracy and counterfeiting in the country, and to impose deterrent-level sentences.” With several legislative initiatives already in the works, Thailand is certainly trying.

Read more at www.bt.com.bn and www.brunei-patents.com.bn

Heineken financial communications manager, John-Paul Schuirink, reported that they are working closely with authorities and other brewers to combat infringement in emerging markets. Likewise, Vietnam Brewery Limited, which serves as brewer and distributor of Heineken and Tiger in Vietnam, has been collaborating with the Ho Chi Minh City Economic Police to monitor and stop counterfeiting.

Read more at www.bangkokpost.com Read more at www.beveragedaily.com

INNOVATIONS DECIDE sm www.kass.com.my

IP exposé

AUGUST ’13

KASS @ ITEX 2013

WORLD IP DAY GIVEAWAY!

This year's International Invention, Innovation and Technology Exhibition (ITEX 2013) was a 3-day whirlwind of activity! We congratulate Dr. Karen Wong Mee Chu and Mr. Lim Yun Seng from Universiti Tunku Abdul Rahman (UTAR) for winning the KASS “Best Invention” Award. If you were there and dropped by our booth (and liked us on Facebook), we thank you from the bottom of our hearts for your support.

WHOSE IDEAS TRIUMPHED? The grand prize of a brand new HTC smartphone went to UiHua C, for his highly original and creative take on our given scenario. Congratulations to UiHua and well done all participants! To check out the winning entry and the other impressive entries, visit www.facebook.com/KASSinternational. UPCOMING KASS EVENTS TALKS 7th September 2013 23rd November 2013 WEBINARS 3rd October 2013 5th December 2013

Bulletproofing Inventions IP Valuation: Using IP Rights as a Collateral

Do I Own the Content I Post Online? Getting into the Franchise Game: Things you Need to Know

2-DAY WORKSHOP 25th – 26th September 2013

Power Up Your Business with Branding, Franchising & Trademarks

Do join us if you can! For more details, contact us at kass@kass.com.my

In conjunction with Hari Raya Puasa (Eid al-Fitr) and Malaysia’s Independence Day this month, we’ll take a look at interesting trademarks and patents related to the two celebrations in this issue of the KASS IP exposé!

“SA'AT MAKKAH” (Makkah watch) [PCT/IB2012/001360]: A single device with a compass to easily find the direction of Mecca, specifically that of the Kaaba, from any other part of the globe.

Eid Mubarak!

Application No. S/018149 Class: 34 Applicant Name: Kelantan Match Factory Sdn. Bhd.

If you have seen any interesting trademarks and patents in the gazettes that you think would be right at home here, drop us a line at kass@kass.com.my!