Follow @AFFAIPR on Instagram!

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Dear valued clients, associates, and colleagues,   We have set up an Instagram account (@AFFAIPR) for you to follow. You will expect us to post regularly about the development of Intellectual Property matters in Indonesia, Timor Leste, and Papua New Guinea. However, the consultations will still be delivered via email, phone call, or face to face meeting. If you have any feedback on how to make the page more interesting, please feel free to flick us an email at [email protected].

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MYANMAR: TRADEMARK AND INDUSTRIAL DESIGN LAWS HAVE BEEN ENACTED

Intellectual Property

After years of waiting, we are pleased to update you that Myanmar new Trade Marks Law and Industrial Design Law have been enacted on 30th January, 2019.   In Trademark Law, there are many significant provisions differed from current practice for the applicant and needs to note the changes since Trade Marks Law is adopting “first-to-file” system instead of “first-to-use” which is currently practicing in trademark registration and all registered trademarks are required to be reregistered in accordance with the new Trade Marks Law to obtain the right given under the new Law.   Following provisions are some highlights of Trade Marks Law for your quick reference: Applicant can claim the priority right and exhibition priority right together with sufficient document and description. If applied mark has been registered at the Office of the Registrar of Deeds, aforesaid registered document is required to be attached. Earliest applicant, who submits the application conformed to specifications, shall have the right to register the Mark if there is dispute to register for same or similar trademarks in different days by more than one person. A person can, who wishes to object regarding the application for the registration of mark, submit the opposition to the Registrar by paying specified fee for any reason mentioned in respective sections within 60 days from the date of announcement. Term of registered Mark shall be (10) years and renewal can be made for 10 years in each time after the expiration of first registration period. Mark owner shall apply to renew the term of registration by paying specified fee within (6) months before expiration date of registration period. Proprietor can apply the case at Intellectual Property Court to make the order of temporary action in accordance with relevant provisions of this Law by means of civil suit for his damage. Proprietor can apply to the Intellectual Property Court to take either criminal or civil action. The owner of the Mark which has been registered at the Office of the Registrar of Deeds in accordance with the Registration Act before enforcement of the Trade Marks Law (OR) the owner who is actually using the Mark in local market shall submit the application for the registration of the mark in accordance with this law if he wants for the right of registered mark. Notwithstanding anything contained in other existing law, Trademark registration shall be carried out in accordance with Trade Marks Law.   Further, although Trademark Law is enacted, according to the provision, the law shall come into force commencing from the day, by notification, issued by the President of the Union. Therefore, the Law is unimplementable at the moment and for the time being applicant can file the Trademark application at the Office of the Registrar of Deeds by submitting the “Declaration of Ownership of Trademark” together with required documents requested by the Office of the Registrar of Deeds and in accordance with the Deeds of Registration Law.   Should you have any question regarding Trademark and Industrial Design in Myanmar, please contact us at [email protected].

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Settle the outstanding annuities, or no new patent filings will be allowed – the DGIP’s latest move to ensure all debts are settled

Intellectual Property

In the past few days, the Directorate General of Intellectual Property of the Republic of Indonesia (the DGIP)  has sent notices to foreign patent owners with regard to the patent holders’ obligations to pay the outstanding annuities within 6 months. Failure to pay up the ‘debt’ caused by the outstanding annuities will result in the refusal of new patent applications.  This surprising move by the DGIP has made several patent holders wondering whether the payment of the outstanding annuities will actually have any effect for the future patent applications by the patent holders. Should you require any assistance in this matter, please contact us at [email protected].

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Trademark Application in Tonga

Intellectual Property, Trademark

Tonga has its own independent registration system. Re-registration of UK marks is no longer permitted but applicants may claim priority rights in Tonga of its UK or other international application. Priority rights may be claimed within 6 months of the filing of the application in the UK/ other international jurisdiction which are members of the Paris Convention. Requirements In order for you to file a trademark application in Tonga, you will need to prepare the following documents: original Authorisation of agent an e-copy of the mark in word format applicant’s name, address and calling of the applicant list of the goods to be protected certified registration application which the Samoa application is claiming priority rights from; or a confirmation document outlining priority rights from corresponding international registration/application The estimated time frame for trademark registrations in Tonga is 18-24 months. Should you require further assistance, please do not hesitate to contact us at [email protected].

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Trademark Application in Samoa

Intellectual Property, Trademark

When it comes to trademark application in Samoa, there are no provisions for re-registration of foreign marks, but applicants may claim priority rights in Samoa of their trademarks registered in foreign jurisdictions. Priority rights may be claimed within 12 months of the filing of the application in the foreign jurisdiction which is a member of the Paris Convention. Requirements We need the following documents/information in order to file the application: original Authorisation of agent an e-copy of the mark in word format applicant’s name, address and calling of the applicant list of the goods to be protected certified registration application which the Samoa application is claiming priority rights from; or a confirmation document outlining priority rights from corresponding international registration/application The estimated time frame for completing trademark registrations in Samoa is 18-24 months. Should you require further assistance, please do not hesitate to contact us at [email protected].    

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Trademark Application in Fiji

Intellectual Property, Trademark

Trademark application in Fiji is either national or based on a national UK registration certificate issued by the United Kingdom Comptroller-General (and not an EU or Madrid registration). Applications for independent registration undergo examination and advertising for opposition before registration, whereas “UK-based” applications are to be registered as of right without examination, advertising or opposition. Priority rights under the Paris Convention do not apply in Fiji as it is not a signatory to the Convention. We use the old British trademark classes and not the international Nice classes, so goods in international Nice classes would need to be reclassified into the relevant local classes. Requirements In order to file a Trademark in Fiji, we need the following documents/information in order to file the application: A list of the goods on which the applicant proposes to use its trademark; An electronic image of the trademark; A signed original of the Authorisation of Agent; A completed form of the Information Sheet; Filing details including the proper name, address, and occupation of the applicant; If the local application is to be UK-based, we will also need a certified copy of the United Kingdom registration certificate issued by the UK Comptroller General. The estimated time frame for completion is approximately 12-18 months. Should you require further information, please contact us at [email protected].

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The Use of Registered Patents by the Government: The Indonesian Perspective

Intellectual Property

Several patent registrations are possible to be used by the Government of the Republic of Indonesia as regulated under Article 109 to 120 of the Indonesian Patent Law. However, there are 2 main determinants that will need to be met first: The patent is related to national security and defence, such as explosive materials, firearms, and explosive ammunition; or There is an urgent need to use the patent for the benefit of the people of the Republic of Indonesia. For instance, in the event of an epidemic of a disease where the cure may only be possible by using registered patents; in the field of agriculture, the use of registered patents by the Government may be needed to counter crop failure caused by pests and/or natural disasters. The use of registered patents by the Government should also be established by a Presidential Decree. The use should also be done with no profit gaining purpose in mind and it is only limited within a certain period. Please note that the use may be extended unilaterally by the Government. The extension should be supported by the recommendation from relevant ministries. For instance, if it is related to health issues, then the extension of the use of registered patents by the Government can only be done after receiving a recommendation from the Ministry of Health. The Patent Holders will always be kept in the loop with regard to the use of their patents in Indonesia by the Government since the Government will send the copy of the Presidential Decree to the Patent Holders. The use of registered patents by the Government related to national security and defence include: Firearms; Ammunitions Military grade explosives; Interceptions; Surveillance; Espionage; Encoding device and analysis encoding devices; Other country’s defence and security process and/or devices. Whereas the use of registered patents by the Government in the event of an urgent need for the benefit of the people include: Pharmaceutical and/or biotechnology products with unaffordable price tags and/or which are needed to counter an epidemic that may result in fatalities of many people, cause significant disabilities, and is considered as a global health issue; Chemical and/or biotechnology products related to agriculture that are needed for food security; Animal drugs that are needed to counter plaguing pests and/or animal diseases; and/or Process and/or products to counter natural disasters and/or environmental disasters. Please note that during the use of registered patents related to national security and defence, the Patent Holders will not be able to exercise its exclusive rights to use, sell, import, lease, assign, produce, and prohibit other parties without their prior consent. Whereas the use of registered patents by the Government in the event of an urgent need for the benefit of the people does not diminish the rights of the Patent Holders to use, sell, import, lease, assign, produce, and prohibit other parties without their prior consent. Registered patents which can threaten or endanger Indonesia’s defence and national security can only be used and exercised by the Government. If the Government has not used them yet, the Patent Holders should obtain prior approval to use from the Government. During the use of the registered patents by the Government, the Patent Holders is exempted from paying annuity fees for its patents. The use of registered patents by the Government is recorded in the Patent Gazette and is published in electronic or conventional media. Please note that their decision to use registered patents is final and binding, hence no possible legal avenue to dispute or challenge the use of registered patents by the Patent Holders. Legal notice The contents of this publication, current at the date of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication. Please contact [email protected] or contact us via our website should you have any question regarding this article.  

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MEET US AT INTA 2018 ANNUAL MEETING IN SEATTLE!

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It is our pleasure to announce that our representative, Mr. Emirsyah Dinar, will attend the upcoming INTA Annual Meeting 2018 in Seattle, WA, the United States of America from May 19 to May 23, 2018. We would be grateful if you could indicate your preferred date and time to meet by visiting http://affa.setmore.com or by contacting us at emirsyah.dinar.co.id if you are unable to find the suitable time slot. It would be a great opportunity to connect and discuss potential collaboration between our firms. Thank you and we look forward to meeting you soon in Seattle! Best regards,   Achmad Fatchy/Emirsyah Dinar

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Reviving a Lapsed Patent Registration in Indonesia

Intellectual Property

The Directorate General of the Intellectual Property Office of the Republic of Indonesia has announced that all lapsed patent registrations due to non-payment are able to be revived. This decision is based on several considerations, namely the goodwill of the patent holders to settle the debt arising from the non-payment, untimely and even missed delivery of the notifications from the Patent Office to the patent holders and/or to the legal proxy in Indonesia, lack of information disclosure by the patent office regarding the payment deadlines, and quite often the non-payment was not due to the patent holder’s fault. Another reason, and perhaps the main reason, for the decision is the need of the government to collect the debt that has arisen from the non-payment. While this can be seen as a golden opportunity to revive lapsed patents, the patent holders should also take into account the payment information of the lapsed patent registrations that have been passed on from the Patent Office to the State Wealth Office and Auction Office under the Ministry of Finance. It is not uncommon to find discrepancies in information about how much the patent holders should pay that is held by the Patent Office and by the State Wealth Office and Auction Office under the Ministry of Finance. It is imperative that double checking with both institutions should be done before making a full payment and to check if it is still possible to revive a patent registration that has been transferred from the Patent Office to the State Wealth Office and Auction Office under the Ministry of Finance. In accordance to the decision by the Directorate General of Intellectual Property of the Republic of Indonesia, the revival can be done by filing the letter of revival request which should be accompanied by the proof of payment of the debt and the interests.  However, the patent holder should also submit a written undertaking stating that they will not take any legal action against another party for infringement of the revived patent during the lapsed period. Given the lack of guideline to whether the other party should immediately stop using the lapsed patent once the revival request has been filed and approved, this particular requirement leaves grave concerns for the parties who have already used the patent with an assumption that the patent has lapsed due to non-payment. Should you have any query please do not hesitate to contact us at [email protected].  

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INTA to Assist Trademark Law Development in Timor Leste

Intellectual Property

AFFA Intellectual Property teamed up with several colleagues from private practices in Timor Leste and Portugal to discuss Intellectual Property Protection in Timor Leste on December 1st 2017. The event was initiated by INTA and the Embassy of the United States of America in Timor Leste. The discussions were attended by several government agencies, such as the Ministry of Justice and National Police of Timor-Leste (PNTL), as well as local and international businesses who operate in the country. INTA, as well as the panels, discussed the current state of the Trademark protection in Timor Leste, followed by how the collaboration can be extended to support the development of Intellectual Property Rights Protection in Timor Leste. AFFA Intellectual Property, which has a permanent office in Timor Leste, presented the current practice in Indonesia and how Timor Leste can learn from it. The topic of Timor Leste’s interest to join ASEAN was also discussed. As you know, the introduction and hopefully the harmonization of IP law is one of the prerequisites for Timor Leste to join the ASEAN. While the Trademark Bill is not yet ready to be discussed by the Parliament, it is hoped that discussions like this will foster the importance of Intellectual Property Protection in the country. For cautionary notices in Timor Leste, please do not hesitate to contact us at [email protected]. *image retrieved from https://tl.usembassy.gov/u-s-embassy-supports-intellectual-property-rights-protection-timor-leste/

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