APAC IP Update – Spring/Summer 2023

China

China releases Work Plan for Systematically Addressing Malicious Trade mark Registrations to Promote High-quality Development (2023-2025)

On 20 April 2023, the China National Intellectual Property Administration (CNIPA) issued the Work Plan for Systematically Addressing Malicious Trade mark Registrations to Promote High-quality Development (2023-2025) (the Work Plan). The main objective of the Work Plan is to make significant progress in the management of malicious trade mark registrations by 2025 and further improve the management system and policies related to malicious trade mark registrations. The ultimate goal is to establish an ecosystem of honest registration, increased usage, and strict protection for trade marks.

The Work Plan demonstrates China's determination to combat the trade marks that are not genuinely intended for use, which requires the trade mark applicants to implement actual use in the registered classes of trade marks and carefully consider defensive trade mark applications.

The full text of the Work Plan is available here (Chinese only).

China’s Supreme People’s Court releases top 10 IP cases and 50 typical IP cases in Chinese courts in 2022

On 20 April 2023, China’s Supreme People’s Court (SPC) released the Top 10 IP Cases and 50 typical IP cases in Chinese courts for the year 2022. These cases cover a range of intellectual property matters, including landmark cases such as the first patent linkage case, trade mark infringement disputes, unfair competition related to search engine optimisation, criminal counterfeiting of registered trade marks, and issues concerning non-fungible tokens (NFTs). The selection of cases not only encompasses traditional patent, trade mark, and copyright infringement cases but also emphasises emerging types of disputes, including the first case involving the patent linkage system and NFT digital works.

The list of the cases is available here (Chinese only).

China releases draft Measures for the Management of Generative Artificial Intelligence Services

On 11 April 2023, the Cyberspace Administration of China (CAC) released the Measures for the Management of Generative Artificial Intelligence (AI) Services (Draft for comments). The Measures aim to regulate research, development and utilisation of generative AI products that provide services to the public within the territory of China. The CAC defines generative AI as “technologies that generate text, pictures, sounds, videos, codes, and other content based on algorithms, models, and rules.”

In addition, the draft Measures stipulate that they should be applied whenever services are offered to the public in China. They do not differentiate between whether the product or service provider is based in China or elsewhere. This means that both domestic and international product service providers conducting business in China are subject to supervision by Chinese regulatory authorities.

The full text of the draft Measures is available here (Chinese only).

China to upgrade status of the China National Intellectual Property Administration

On 7 March 2023, China released the 2023 State Council Institutional Reform Plan (the Plan). The Plan removes the China National Intellectual Property Administration (CNIPA) from the State Administration of Market Regulation (SAMR) and makes it a top-level agency under the State Council. The SAMR will continue its enforcement of IP rights, while receiving professional guidance from the CNIPA in relevant enforcement work. This restructuring signifies a division of responsibilities and a collaborative approach to the management and protection of IP in China at the national level. It highlights the importance that China places on promoting and safeguarding IP development.

Furthermore, the Plan proposes additional organisational changes, such as the reorganisation of the Ministry of Science and Technology and the establishment of a new National Data Administration under the National Development and Reform Commission.

The full text of the Plan is available here (Chinese only).

Hong Kong

Changes proposed for Implementation of the Madrid Protocol in Hong Kong

On 18 April 2023, the Hong Kong Intellectual Property Department has briefed the Legislative Council on the proposed new Trade Marks (International Registration) Rules under the Trade Marks Ordinance (Cap. 559) to set out the detailed procedures and rules for the future implementation of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol) in Hong Kong, and to amend the Trade Marks Rules (Cap. 559A) to enhance the operational workflow and proceedings at the Trade Marks Registry under the current domestic trade mark registration regime, as well as to reduce the current fees for filing domestic trade mark applications by electronic means.

The Madrid Protocol is an international agreement providing an international system (the Madrid System) to facilitate trade mark owners to obtain protection in multiple jurisdictions by making a single application. The Madrid System is administred by the International Bureau (IB) of the World Intellectual Property Organisation. As of today, there are 114 contracting parties covering 130 countries, including major economies such as China, the EU, UK and US.

Under the Madrid System, a natural person or legal entity can file an international application through its home trade mark office (as the Office of Origin) so long as it has a valid trade mark application/registration with the Office of Origin (as the Basic Mark). On filing the international application, the applicant can designate one or more of the contracting parties in which it intends to register its mark and pay one set of filing fees with the Office of Origin. The Office of Origin and IB will check the formalities of the international application to confirm that all requirements have been met and the application has been properly filed. They will then register and publish the mark making it an international registration. The IB will then notify the trade mark office of each of the designated contracting parties designated by the applicant and each of those trade mark office will conduct substantive examination in accordance with local laws and procedures and notify the IB of any refusal. If no refusal is notified to the IB within the prescribed period, full trade mark protection will be deemed to have been granted in the jurisdiction of the relevant designated contracting party.

It is expected that the implementation of the Madrid Protocol in Hong Kong will enhance the global recognition of Hong Kong’s trade mark regime.

Hong Kong Copyright (Amendment) Ordinance 2022 goes into effect

The Copyright (Amendment) Ordinance 2022 (the Amendment Ordinance) came into operation on 1 May 2023.

This major update to the copyright regime strengthens Hong Kong’s IP protection regime, especially in the digital environment. The main changes include:

1. Introduction to a technology-neutral communication right for copyright owners;
2. Introduction to criminal sanctions against infringing activities relating to the new communication right;
3. Expansion of the scope of copyright exceptions;
4. Introduction of the "safe harbour" provisions for online service providers; and
5. Introduction of additional factors to consider in civil cases when assessing whether to award additional damages.

The Hong Kong government will embark on another round of review now that the amendment has come into effect in order to address new copyright issues that were not covered by these legislative updates.

Click here for the Amendment Ordinance.

Hong Kong Customs’ cross-border trade mark infringement cases and joint enforcement operations

Although having COVID-19 restrictions in place for the past two years, Hong Kong Customs still detected over 1,200 cases of infringement of intellectual property rights in 2021 and 2022, of which the majority of them involved trade mark infringement items. One of the cross-border trade mark infringement cases that Hong Kong Customs participated in has been selected for inclusion in the 2022-2023 Top Ten Cases at the Annual Top Ten Intellectual Property Protection Cases Announcement held by the quality Brands Protection Committee of the China Association of Enterprises with Foreign Investment (QBPC) on 26 April 2023 in Beijing. It was the first infringement case selected as the Top Ten Cases among those in which Hong Kong Customs had participated.

QBPC is an intellectual property protection organisation in the Mainland (a subordinate to the China Association of Enterprises with Foreign Investment under the Ministry of Commerce) and it makes contributions to facilitate and promote the continuous improvements of administrative and judicial protection for intellectual property.

The Annual Top Ten Cases in Intellectual Property Protection have great international influence in the area of intellectual property protection and the selected cases are classified in three categories:

• Criminal Case and/or Criminal Procedure;
• Civil Case and/or Civil Procedure;
• Administrative Case and/or Administrative Procedure.

The Hong Kong Customs’ case selected as one of the Top Ten Cases falls under the Administrative Case and/or Administrative Procedure category. The selected case demonstrated the close cooperation between Hong Kong and Mainland law enforcement agencies and have set a precedent for collaboration in the protection of intellectual property rights under the different legal systems of Hong Kong and the Mainland. Through intelligence exchanges and close communication, this case marks the first instance of successful coordination between Hong Kong and the Mainland to successfully trace and punish the distributor of counterfeit products and marks an important reference for handling cross-border intellectual property infringement cases.

Further, in April and May 2023, Hong Kong Customs conducted a 19-day joint enforcement operation with Mainland and Macau Customs to combat cross-border counterfeiting activities. During the operation, Hong Kong Customs seized about 14,000 suspected counterfeit goods worth about HKD 3.9 million.

This was the first joint enforcement operation post COVID-19, during which the three Customs administrations stepped up inspection of goods across their three jurisdictions destined for North America, South America, Europe as well as countries and regions in the Belt and Road Initiative, to effectively curb cross-boundary counterfeit goods transshipment activities. Suspected counterfeit goods seized include shoes, clothes, ornaments, watches, sunglasses, mobile accessories and earphones.

The Hong Kong Customs, Mainland Customs and Macau Customs and other overseas law enforcement agencies have been working closely together to combat cross-boundary counterfeit goods transhipping activities through intelligence exchanges and joint-enforcement actions.

Singapore

IPOS publishes guidance on trade mark classification practices for NFTs and metaverse-related goods and services

On 10 February 2023, the Intellectual Property Office of Singapore (IPOS) published a Circular (No. 2/2023) to clarify how the Registry of Trade Marks will classify non-fungible tokens (NFTs) and metaverse-related goods and services in trade mark registration applications. The mere description “NFTs” will not be accepted unless they indicate the digital or physical goods or services they are linked to. These goods and services linked to NFTs will be classified according to established classification principles. Examples of acceptable descriptions include “downloadable music files authenticated by NFTs” (Class 9), and “Paintings [pictures] authenticated by NFTs” (Class 16).

Goods and services for the metaverse’s virtual environment will also be classified according to established classification principles. Examples of acceptable descriptions include “downloadable computer software for metaverse” (Class 9) and “computer programming for metaverse” (Class 42).

Downloadable virtual goods would generally fall under Class 9, but applicants must specify the exact nature of the virtual goods (e.g. avatars or digital images of clothing for use in virtual environments).

Click here to view the full text of the Circular.

Singapore High Court confirms employers can be held vicariously liable for copyright infringement by employees

On 1 March 2023, the General Division of Singapore’s High Court released its decision in Siemens Industry Software Inc (formerly known as Siemens Product Lifecycle Management Software Inc) v Inzign Pte Ltd [2023] SGHC 50, where it found an employer vicariously liable for copyright infringement committed by its employee. In this case, the Defendant firm’s employee installed and used an unlicensed copy of the Plaintiff firm’s software on an unattended and unsecured laptop belonging to the Defendant so that he could familiarise himself with the software, which he used in the course of his work. The employee’s acts were later discovered by the Plaintiff via an automatic reporting function built into the software, which led the Plaintiff to bring a claim against the Defendant for copyright infringement.

While the Court held that the Defendant firm was not directly liable for the employee’s infringing acts, it held that the Defendant was vicariously liable for the following reasons:

First, there was a special relationship between the Defendant and the employee by virtue of the contractual employment relationship between them.

Second, there was a sufficient connection between the employment relationship between the Defendant and employee, and the copyright infringement committed by the employee. The circumstances in which the employee was allowed to operate allowed the employee to commit the infringing acts, and the Defendant failed to take reasonable steps to prevent the employee from committing these acts (e.g. by keeping a record of its IT inventory and ensuring that administrative controls were installed on all devices). Further, the infringing acts were committed by the employee in the context of his employment for the Defendant’s benefit.

The Court’s decision was also motivated by two policy considerations: that the Defendant was in a better financial position to adequately compensate the Plaintiff; and that imposing vicarious liability will incentivise employers to take steps to reduce copyright infringement by their employees.

Click here to view the full text of the judgment.

Singapore, Vietnam

IPOS and IPVN launches ASEAN’s first Collaborative Search and Examination Programme between Singapore and Vietnam

On 1 March 2023, the Intellectual Property Offices of Singapore (IPOS) and Vietnam (IPVN) piloted a Collaborative Search and Examination (CS&E) programme, which will run until 28 February 2025 . This is the first time a CS&E programme has been piloted in the Association of Southeast Asian Nations (ASEAN).

Under the programme, a patent applicant in Singapore or Vietnam can benefit from the combined search and examination expertise of the two countries’ IP offices, accelerated first office timelines, and deferred translation and official patent filing costs for the second office of filing until the applicant subsequently files for a claim of right of priority. If an applicant decides to file a corresponding application in the other country, they will also enjoy prioritised search and examination at the second office of filing.

This CS&E programme is available to first filing applicants with a local representative/address. The application should contain 20 or fewer claims with a total of three independent claims. There is also a monthly cap of up to four and a yearly cap of 20 CS&E requests shared between both countries.

There is presently no fee charged for CS&E requests, although other patent filing fees will still apply.  

Click here to view IPOS’ factsheet for the CS&E programme, and this link to view IPVN’s CS&E programme announcement. 

Indonesia

Indonesia’s new criminal code to introduce IP-related offences

Indonesia’s new Criminal Code (Law No. 1 of 2023) was ratified by President Joko Widodo on 2 January 2023. The Code, which will take effect on 2 January 2026, introduces offences specific to IP. In particular, the Code will criminalise the use of counterfeit marks on goods or packaging, falsely asserting IP ownership in IP court proceedings or signing a declaration of use for trade marks without actually making this use, and the disclosure of trade secrets. These IP-related provisions complement and expand existing laws forbidding the unauthorised use of trade marks and disclosure of trade secrets.

Click here to access the Law No. 1 of 2023 of 2023 (Indonesian only).

Myanmar

Myanmar fully launches its Trade Mark Law and holds grand opening of its IP Department

Myanmar’s Trade Mark Law 2019 came into effect on 26 April 2023 in conjunction with the country’s grand opening of its Intellectual Property Department (MIPD) and new trade mark registration system. The Trade Mark Law establishes a first-to-file trade mark registration system, replacing the previous first-to-use system under the Office of Registration of Deeds (ORD), which offered less comprehensive protections.

Under the new law, trade mark registrations are valid for ten years beginning from the application date. Applicants who initially applied for trade mark registration in a Paris Convention or World Trade Organisation member state also enjoy right of priority if they apply to have the same trade mark registered in Myanmar within six months after the initial application date. The law also establishes criminal penalties for trade mark infringement and counterfeiting.

In the lead up to 26 April 2023, owners of trade marks registered with the ORD or used in Myanmar were required to apply to have their trade marks registered under the new system to enjoy the rights relating to registered marks under Trade Mark Law 2019. Such owners of existing marks who filed their application before the MIPD’s grand opening will be accorded a common filing date (i.e. the date of the grand opening) for their trade mark applications provided they submit Form TM-2 (Appointment of Representative) signed and notarised and pay the official fees for their applications by 30 June 2023.

Click here to view the full text of Myanmar’s Trade Mark Law 2019 (Provisional English translation provided by the Japan International Cooperation Agency).