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

LAWPLUS 2
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

LAWPLUS 3
Intellectual Property and Digital Economy
Efficiency-
Driven
Economy
Innovation-
Driven
Economy

LAWPLUS 4
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

LAWPLUS 5
• 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.

LAWPLUS 6
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

LAWPLUS 8
Source: EABC ICT Working Group, March 2015
The Digital Economy works as we see in three layers – built up from bottom to top.

LAWPLUS 9
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 10
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 11
Trademarks in Digital Economies and Development
THAILAND PHILIPPINES
INDIA CHINA

LAWPLUS 12
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

LAWPLUS 13
1931
Berne Convention
1989
Convention Establishing WIPO
2008
Paris Convention
2009
Patent Corporation Treaty - PCT
2016 (in process)
Madrid Protocol

LAWPLUS 14
•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

LAWPLUS 15
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

LAWPLUS 16
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
ProtectionCommercialization
Thailand is a stable,
prosperous, and
sustainable
developed country

LAWPLUS 17
INDIA CHINA

LAWPLUS 18
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)

LAWPLUS 19
•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

LAWPLUS 20
•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.

LAWPLUS 21
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.

LAWPLUS 22
INDIA CHINA

LAWPLUS 23
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)

LAWPLUS 24
•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.

LAWPLUS 25
• 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

LAWPLUS 26
• 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.

LAWPLUS 27
• 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.

LAWPLUS 28
• 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

LAWPLUS 29
INDIA CHINA

LAWPLUS 30
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

LAWPLUS 31
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.

LAWPLUS 32
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.

LAWPLUS 33
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.

LAWPLUS 34
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.

LAWPLUS 37
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.

LAWPLUS 41
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kowit.somwaiya@lawplusltd.com

Trademarks and Their Importance to Digital Economies of Developing Countries

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