AsiaIPINFORMED ANALYSIS JUNE-JULY 2021 • VOL 13 ISSUE 06 IP Experts 2021

THE IPAB ABOLITION INSIGHTS FROM INDIA When the Appellate Board was suddenly abolished in April, lawyers across India were taken by surprise.

THE GROWTH OF THE UNTOUCHABLES SECURING INTANGIBLES: NON-FUNGIBLE TOKENS Amidst social distancing in the THE MONEY MADE ME DO IT Collectors have gone crazy over non-fungible tokens, Covid-19 pandemic, Chinese If you fail to protect your intangible a blockchain-driven authentication technology netizens have found significant assets, they will come to be increasingly used in crypto collectibles. But before you comfort by interacting with possessed by evil entities such as dive right in to buy the latest CryptoPunks card, you their favourite animated trolls, and that can cost a fortune. should know just what you’re actually buying. characters online.

CONTENTS

4 COVER STORY THE IPAB ABOLITION INSIGHTS FROM INDIA When the Intellectual Property Appellate Board was suddenly abolished in April, lawyers across India were taken by surprise. —ESPIE ANGELICA A. DE TABLE OF CONTENTS

4 | OPINION 23 | FEATURES The shuttering of the IPAB 7 key IP strategies in the 46 | FEATURES Philippines , and 11 | FEATURES In this digital age, intangible assets, the racism of Dr. Seuss The growth of non-fungible including intellectual property rights, are When the estate of Dr. Seuss pulled six tokens proving to be more valuable to businesses of the author’s books for children due to Collectors have gone crazy over non- than tangible assets.—SUSAN D. VILLANUEVA, changing societal norms, some fans were fungible tokens, a blockchain-driven PATRICIA A. O. BUNYE AND ANDREA Y. ALEGRE outraged.—EXCEL V. DYQUIANGCO authentication technology increasingly used CORRESPONDENTS in crypto collectibles. But before you dive 27 | FEATURES 49 | right in to buy the latest CryptoPunks card, IP strategies for ASEAN you should know just what you’re actually educational institutions • Favipiravir: Patent rejection in buying.—EXCEL V. DYQUIANGCO in the Philippines India As the Philippines works towards • Can you protect your IP with an NDA? 16 | FEATURES fulfilling the United Nations’ Sustainable • Is India “foreign decree enforceable The Untouchables Development Goals – including one aimed friendly”? Amidst social distancing in the Covid-19 at promoting quality – EDITHA R. pandemic, Chinese netizens have found HECHANOVA AND MISAEL F. COSTES significant comfort by interacting with their favourite animated characters online.— 32 | FEATURES JOHNNY CHAN IP Experts 2021: Japan

20 | FEATURES 42 | FEATURES Securing intangibles: Moving images: The money made me do it A new wave of If you fail to protect your intangible assets, advertisement they will come to be possessed by evil As owners become increasingly entities such as trolls, and that can cost a creative with their use of moving images in fortune.—JOHNNY CHAN their , lawyers around the region have devised a variety of ways to protect those moving images.—EXCEL V. DYQUIANGCO

2 IP JUNE-JULY 2021 OPINION

JUNE-JULY 2021 VOLUME 13, ISSUE 06 ISSN: 2072-3229

MANAGING EDITOR Gregory Glass T: +852 3996 9541 E: [email protected]

STAFF WRITERS Johnny Chan E: [email protected] Espie Angelica A. de Leon The shuttering of the IPAB E: [email protected]

Excel Dyquiangco obody expected India’s Intellectual Property Appellate Board to be E: [email protected] N summarily abolished in April. CREATIVE DIRECTOR Having only reached the young age of 18, the IPAB had been created Richard Arroyo in 2003 as part of India’s accession to the TRIPS Treaty – the Agreement

HEAD OF BUSINESS DEVELOPMENT on Trade-Related Aspects of Intellectual Property Rights. The IPAB was Patrick Chu established in order to ensure the speedy disposal of appeals and other E: [email protected] matters in relation to , patents, geographical indications and BUSINESS DEVELOPMENT MANAGER . It was, as many commentators have noted in its passing, Isaac Man designed to create a single forum to serve four disparate areas of E: [email protected] intellectual property rights. MARKETING & EVENTS MANAGER One of our first jobs in legal media – while still at a previous Hok Yin Yiu employer – was to compile statistics from the IPAB and publish them in E: [email protected] a simple format, easy-to-find and understand in each of our quarterly CONTRIBUTORS India supplements. It was hardly the exciting, high-minded journalism Andrea Y. Alegre, Patricia A.O. Bunye, Misael F. Costes, Editha Hechanova, one hopes to undertake after moving halfway across the planet to Puwin Keera, Denise Mirandah, D.P.S. , but even then, in the IPAB’s early days, it was clear that the Parmar, Archana Shanker, Priya board was doing important work in India, bringing together a panel of Singh, Susan D. Villanueva intellectual property experts to decide the country’s key intellectual OFFICE MANAGER property cases. It was, many said, India’s entry to the big leagues of Edna Chow IP protection. After all, India was following jurisdictions including the

PUBLISHER United States, the , Japan and South Korea in creating a Darren Barton separate, intellectual property-only tribunal. T: +852 3996 9540 E: [email protected] The IPAB ruled from across the country, from benches in Ahmedabad, Chennai, New Delhi, Kolkata and Mumbai, and was among CONTACT US the first Indian institutions to adapt to the Covid-19 pandemic in 2020, EDITORIAL when it almost at once adopted a virtual hearings system and an online E: [email protected] filing system. SUBSCRIPTIONS/CUSTOMER SERVICE Where the IPAB was innovative, it was also effective. Statistics E: [email protected] suggest that only about 3 percent of cases decided by the IPAB have been ADVERTISING appealed, and that less than 1 percent of its decisions have been reversed E: [email protected] on appeal. India’s usually upheld decisions coming from the IPAB. PUBLISHED BY We spoke with lawyers across the country about what the IPAB’s abolition will mean for intellectual property rights owners. Although the Delhi did announce in July that it would launch an IP division, Apex Asia Media Limited 21/F Gold Shine Tower many lawyers are concerned how the country’s other high courts will 346-348 Queen’s Road Central Hong Kong handle the void – and whether they will be able to handle the workload.

T: +852 3996 9540 F: +852 3015 8136 Don’t miss this story, inside this issue of Asia IP. E: [email protected] W: www.asiaiplaw.com © Apex Asia Media Limited 2021 DISCLAIMER The copyright of this magazine is held by the publisher. No part may be reproduced, copied, or stored in a retrieval system without the prior written consent of the publisher. The material in this magazine does not constitute advice and no liability is assumed in relation to it. The views expressed in this magazine are the views of the respective Darren Barton Gregory Glass authors, and do not necessarily reflect the views of the publisher, its staff, or members of the editorial board. PUBLISHER MANAGING EDITOR SUBSCRIBE TODAY Asia IP is published 10 times per year, with subscriptions costing US$595 per year. To subscribe, use one of the following channels Subscribe at www.asiaiplaw.com to start your subscription immediately Call +852 3996 9540 [email protected] Subscribe today to gain the intelligence you need to protect your IP assets in Asia

JUNE-JULY 2021 Asia IP 3 COVER STORY

The IPAB abolition Insights from India

4 Asia IP JUNE-JULY 2021 WHEN THE INTELLECTUAL PROPERTY APPELLATE BOARD WAS SUDDENLY ABOLISHED IN APRIL, LAWYERS ACROSS INDIA WERE TAKEN BY SURPRISE. ESPIE ANGELICA A. DE LEON FINDS OUT JUST WHAT LAWYERS ARE THINKING OF ITS ABOLITION IN THIS EULOGY TO THE IPAB.

n April 4, 2021, the Central Government of India promulgated The Tribunals Reforms (Rationalization And Conditions Of Service) Ordinance. OThe objectives of the ordinance are, among others, 1) to provide a mechanism for filing appeals directly to the high courts, 2) dissolve tribunals found to be unnecessary, 3) hasten the resolution of cases and delivery of justice at low cost, 4) reduce expenditures on infrastructure and operational expenses and 5) address the shortage of supporting staff of tribunals and infrastructure including delays in the appointment of technical members. Among those that were dissolved under the ordinance was the Intellectual Property Appellate Board (IPAB). With this, all pending cases before the IPAB will be transferred to India’s high courts. IP lawyers in India were surprised at this development. They believe the IPAB, despite its flaws, should not have been abolished at all.

The IPAB: Beginnings and early challenges Established in 2003 by virtue of the Trade Marks Act, 1999 Section 83, the IPAB also served as an additional forum where cancellation/rectification proceedings could be filed, aside from being an appellate tribunal. “The legislative intent behind setting up the IPAB was to speed up the process of justice by having specialists on the panel and by having more straightforward procedural requirements,” said Sonal Madan, a partner at Chadha & Chadha in New Delhi. “However, the purpose was lost along the way.”

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For one, delaysThis in thecontent appointment is reserved of both forCan our the high registered courts handle users it? technical and judicial members resulted inand/or prolonged subscribers “In my view, while the high courts could effectively act periods where the board became non-functional. on appeals and invalidity actions, given their existing The IPAB had both judicial and technical members workload, expecting any high court to now also for patent-related cases. ToThe readtechnical the member latest was issue, deal registerwith an additional for free case load of IP cases – some someone with an engineeringby or clickingtechnology degreethe ‘REGISTER’ or of which maylink involve above technical issues that need to be master’s degree in science and had at least 10 years of intricately examined and understood – will likely lead experience as a registered patent agent or at least five to added pressure and more time being expended on years as controller of patents.To read all back issues,each and case,” gain said access Aishwarya to Menon, a partner at K&S The constitutionality of the Trade Mark Act Partners in Gurugram. provision for establishingexclusive the IPAB subscriber-only was challenged content,“This will subscribe in turn slow down to the disposal of cases in a petition filed byAsia the late IP byShamnad clicking Basheer on in thethe ‘andSUBSCRIBE increase the ’backlog link above which would go against the Madras High Court in 2011. The petition dealt with likely intent of the ordinance.” the qualifications of the IPAB members and the fact This backlog has been exacerbated by the Covid-19 that even though the IPAB was a tribunal with judicial pandemic. powers, its members did not possess the necessary That the board’s principal seat is in Chennai added experience. Moreover, the majority were technical further to the problem since it had a limited travelling (executive) members. roster for some cities where hearings were held. Before “The petition assailed the composition of the the issuance of the ordinance, around 5,000 cases were IPAB as violative of the constitutional premise of pending before the IPAB. separation of powers of the judiciary and the executive. For Manisha Singh, co-founder and partner The Madras High Court examined in depth the issues at LexOrbis in New Delhi, it is doubtful that the high raised in the petition and while disposing of it on courts will even prioritize patent cases since the March 10, 2015, gave a slew of directions to the Union of have no specialized knowledge on technical matters. India with regards to the criteria for appointment and But, according to Madan, the high courts do have qualifications of members of the IPAB. However, these the relevant expertise. were not implemented nor was the decision challenged “It is noteworthy that the Patents Act, 1970 in the Supreme Court,” said Binny Kalra, attorney at Ira provides that if the defendant makes a counterclaim Law in New Delhi. for revocation of the patent, the suit, along with the

6 Asia IP JUNE-JULY 2021 "It was a tribunal that understood and focused purely on IP issues. It had a good balanced mix of "33 percent of all judicial both technical and judicial posts at the high court- members adjudicating level are vacant and the matters. Had there been government has been slow to timely appointments to fill the vacancies of judges. the board, the IPAB would Thus, it would defeat the certainly have been an purpose of transferring effective forum." the cases from the IPAB —AISHWARYA MENON, partner, K&S to the high courts." Partners, Gurugram —SHASHI OJHA, managing associate, RNA Technology and IP Attorneys, Gurugram "Different branches of IP offices often follow different practices "The statistics show and adopt different that the reason for the interpretations of the law. IPAB’s abolishment is The abolition of the IPAB not based on accurate may leadSUBSCRIBER-ONLY to divergence in data. As soon as the the opinion of various high government appointed courts, which would in turn the chairman and increase the workload on technical members, the Supreme Court."CONTENT the disposal rate of —SHUKADEV KHURAIJAM, partner, appeals, revocations Remfry & Sagar, Gurugram was extremely This content is reserved for our registered users efficient and fast." "While the idea of and/or subscribers —ARCHANA SHANKER, the IPAB was a great senior partner and head of patents and one, its execution failed designs, Anand and Anand, Noida spectacularly. TheTo read IPAB the latest issue, register for free by clicking the ‘REGISTER’ link above was a doomed institution "The IPAB was a more unless the underlying informal and less core problemsTo read all back issues, and gain access toexpensive forum. It were meaningfullyexclusive subscriber-only content, subscribe to provided addressed." opportunities —BINNY KALRA, attorney,Asia IraIP Law, by clicking on the ‘SUBSCRIBE’ link above New Delhi to patent and trademark agents to 'The legislative intent represent the behind setting up the clients whereas IPAB was to speed up representation the process of justice by before the high court having specialists on the is limited to advocates, panel and by having which will increase the more straightforward cost of appeal." procedural requirements. —MANISHA SINGH, co-founder and However, the purpose partner, LexOrbis, New Delhi was lost along the way." —SONAL MADAN, partner, Chadha & Chadha, New Delhi

JUNE-JULY 2021 Asia IP 7 COVER STORY

SUBSCRIBER-ONLY counterclaim, shall be transferred to the high court medium to bring about consistency in IP jurisprudence. for decision. Likewise, the Designs Act, 2000 provides Aside from four patent offices, India also has five for referring cancellation petitionsCONTENT to the high court trademark offices located in different parts of the and empowers the high court to rectify the register,” country. Madan explained. “Thus, even before the disbandment, “These different branches of IP offices often follow decisions from the IPAB could be challenged before the different practices and adopt different interpretations writ courts and the Supreme Court.” of the law. The abolition of the IPAB may lead to In particular, Thisthe high content courts inis reservedNew Delhi, fordivergence our registered in the opinion users of various high courts, which Calcutta, Chennai and Mumbai have and/oralways had subscribers would in turn increase the workload on the Supreme original jurisdiction over IP matters. Therefore, they Court,” he said. already have the expertise. Furthermore, there is the issue of vacancies at the In addition, as providedTo read by the Patentlatest Act, issue, high register courts. for free the judges may seek technicalby helpclicking and appoint the ‘REGISTER’ an “Thirty-three link above percent of all judicial posts at the independent scientific advisor. high court-level are vacant and the government has Still, for Kalra, the IPAB was doomed. been slow to fill the vacancies of judges,” said Shashi “While the idea of theTo IPABread was all a backgreat one, issues, its Ojha, and managing gain access associate to at RNA Technology and IP execution failed spectacularly. The persistent issues Attorneys in Gurugram. “Thus, it would defeat the with the flawed compositionexclusive of the subscriber-only IPAB struck at the purpose content, of transferring subscribe the cases to from the IPAB to the root of judicial decisionAsia making IP by which clicking was an essential on the ‘highSUBSCRIBE courts.” ’ link above requirement of the IPAB,” she explained. “The IPAB was Another issue is the expense to the appellant/ therefore a doomed institution unless the underlying petitioner. As of this writing, the fees to be paid and the core problems were meaningfully addressed. Efforts formalities for filing remain unknown. to legitimize orders passed in the absence of technical “The decision of disbanding the IPAB is not a good members met with criticism while the Supreme move for IP right owners,” said Singh. Court refused to extend the tenure of the incumbent According to her, many landmark decisions by the chairperson earlier this year even as the government IPAB have raised the standard of IP dispute resolution held back on appointing a new chairperson, which in in India. Several of these decisions also helped to hindsight was perhaps a sign of things to come.” establish right practices at IP offices. “The IPAB was a more informal and less expensive Other issues forum. It provided opportunities to patent and Another issue is that every high court with original trademark agents to represent the clients whereas jurisdiction will give its own interpretation of the representation before the high court is limited to statute. This may lead to inconsistencies due to lack of advocates, which will essentially increase the cost of a uniform procedure. appeal,” Singh added. According to Shukadev Khuraijam, a partner To begin with, there is evidence that the IPAB was at Remfry & Sagar in Gurugram, the IPAB acted as a actually efficient.

8 Asia IP JUNE-JULY 2021 SUBSCRIBER-ONLY “The statistics show that the reason for the IPAB’s “I disagree with the government’s decision to abolishment is not based on accurate data,” said abolish the IPAB. The ordinance was brought in hurriedly Archana Shanker, senior partner andCONTENT head of patents by the government without consulting stakeholders and and designs at Anand and Anand in Noida. “As soon as without developing any mechanism for transfer of cases the government appointed the chairman and technical from the IPAB to respective high courts,” said Ojha. members, the disposal rate of appeals, revocations was “Generally speaking, disbanding an institution extremely efficient and fast.” should be the last resort and every effort must be made According to statisticsThis content from August is reserved2020 to tofor fill our up the registered cracks and makeusers it work,” said Kalra. “One February 13, 2021, the IPAB’s disposal rateand/or was as subscribers assumes that in the wisdom of the government, the IPAB follows: 140 trademark cases were disposed out of a conundrum did not have a solution.” total of 860 cases heard, 126 patent cases were disposed For Madan however, the dissolution will make it out of 464 heard and 52 copyrightTo read cases the were latestdisposed issue, geographically register easier for to free file for appeals. out of 217 cases heard. by clicking the ‘REGISTER’“As per link some above news reports, the high courts are “During the last six months it was active, the in the process of framing the rules for transfer and IPAB had disposed around 50 cases per month,” said adjudication of matters that the IPAB was handling. Thus Khuraijam, “which is a veryTo healthy read allrate backof disposal issues, the andmove wouldgain helpaccess streamline to the process in the long when seen in perspective of the filings before it.” run and make it easier to litigate cases. The Commercial “The number of disposalexclusive of appeals subscriber-only at the IPAB Courts, content, Commercial subscribe Division to of High Courts and were far more than theAsia number IP byof appeals clicking decided on by the Commercial ‘SUBSCRIBE Appellate’ link Division above of High Courts Act, the high courts prior to the establishment of the IPAB,” 2015 provide a timeline for adjudication of commercial said Singh. disputes by the commercial courts and the commercial There have also been many instances when the division of the high courts. So we can hope for matters IPAB passed decisions within six months of filing an to be resolved more efficiently and quickly through this appeal. process,” Madan said. “A stable and predictable IP ecosystem is critical This actual transfer of cases to the respective high for any jurisdiction to achieve the status of a developed courts, which include physical tracing, digitization of economy,” said Shanker. “Patent rights, in particular, records and actual transfer, will take time, said Menon. have a limited life and therefore delays at the patent Yet despite the drawbacks, Menon agrees the IPAB office and then at the high court further disincentivizes should not have been disbanded. “It was a tribunal that the applicant from filing applications in India and/or understood and focused purely on IP issues. It had a good challenging orders of the controller that can lead to balanced mix of both technical and judicial members setting up of arbitrary and non-uniform jurisprudence.” adjudicating matters. In my view, for the most part, Apart from this, Shanker said the dissolution will the IPAB functioned effectively in the matters which reduce the accountability of the patent office. it did take up,” said Menon. “Had there been timely And then there is the issue of absence of appointments to the board, the IPAB would certainly consultations with stakeholders. have been an effective forum.”

JUNE-JULY 2021 Asia IP 9 COVER STORY

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Impact on the local and international business sectors functioning, the IPAB remained unremarkable and How will this affect India’sThis IPcontent legal framework is reserved in general formay our not beregistered missed much,” users said Kalra. “Therefore, the and the confidence of the local and and/orinternational subscribers disbanding of the IPAB is not expected to significantly business community in India? affect the confidence of the local and international According to Singh, the effect will be tremendous, business community in India. especially on the internationalTo read business the community,latest issue, registerHowever, she for added free that one can hope that the which will see this developmentby clickingas a retrograde the step‘REGISTER’ judiciary andlink the above executive will work together so as in IP dispute resolution in India. This, at a time when not to create a void for an extended period. But this special courts are being established and strengthened should begin with an efficient system of transferring in other jurisdictions to speedTo read up IP disputeall back resolution. issues, files and of gainpending access cases, announcement to of the roster for “The speedy and timely resolution of appeals hearings, and enabling of filing of fresh appeals before by the IPAB have restoredexclusive the confidence subscriber-only of the local the content, appropriate subscribe high courts. to and International IPAsia community IP by over clicking the years. on This the is ‘SUBSCRIBE“While the immediate’ link above implications of the decision visible from the enormous rise in filing of applications are yet to be seen, this move is expected to help the in all IP fields,” she explained. “When the dispute IP legal framework in the long run. The international resolution will return to civil courts, the confidence business community should also benefit from this and of the international IP community would shake on rely on the high courts’ framework and infrastructure,“ the counts of further delay and increased cost. In said Madan. the absence of specialized technical members and “Overall jurisprudence in the country has been specialized judges, the confidence of IP owners would progressing well and the local and international further shake on the quality of decisions particularly business community can rest assured that though relating to patent appeals and revocation actions in the there may be some teething troubles in the beginning,” field of emerging new technologies.” said Khuraijam, “we are hopeful that rights will not be “Scrapping the IPAB would be prejudicial to India’s adversely impacted.” credibility as an IP jurisdiction that can offer speedy “One wonders if the creation of specialized IP protection of IP assets,” said Ojha. “Stakeholders courts is the final intention behind the executive’s will bear the brunt of this change as there is no clear move to abolish the IPAB. One hopes so,” he added, “as roadmap in place.” that would be the silver lining in this massive policy “In my personal view, with a low and inconsistent change.” AIP output of decisions due to prolonged periods of no

10 Asia IP JUNE-JULY 2021 FEATURES

THE GROWTH OF NON-FUNGIBLE TOKENS Collectors have gone crazy over non-fungible tokens, a blockchain-driven authentication technology increasingly used in crypto collectibles. But before you dive right in to buy the latest CryptoPunks card, Excel V. Dyquiangco notes that you might not be buying everything you think you are.

JUNE-JULY 2021 Asia IP 11 FEATURES

lockchain technology has spurred a lot of ether for sellers – an astonishing US$500 million. A opportunities for growth – and for new single CryptoPunk NFT called “Covid Alien” sold for products and services. One of the emerging US$11.8 million at a Sotheby’s auction in June 2021. new platforms that has taken 2021 by storm is The most expensive NFT sold to date is one called Bcalled NFTs, or non-fungible tokens, which are unique Everydays: the First 5000 Days, by an artist named Mike digital signatures or tokens created by using blockchain Winkelman (and as Beeple). The creation is a collage technology, in particular using relevant platforms that of 5,000 digital images created by Winkelman for his operate on blockchains used for certifying ownership Everydays series; its associated NFT sold for US$69.3 of digital files of real or intangible assets. Commonly, million by auction house Christie’s in March 2021, and creators of NFTs on the blockchain pay a service fee in was paid for with 42,329 ether. cryptocurrency for the creation of an NFT. Athletes – even those who aren’t particularly The tokens are digital representations of artwork, well-known – have also profited off the NFT business. sports cards or other collectibles tied to a blockchain, Luka Garza, a senior centre on the University of Iowa’s typically on the ethereum digital currency platform. 2020-2021 varsity intercollegiate basketball team and Once created and attached to digital works, the first U.S. collegiate athlete to auction off an NFT, NFTs are immutable on the blockchain. NFTs can be sold a card for more than 19.9111 ether (US$41,000) in transferred or assigned through auction websites April 2021. such as the New York-based OpenSea marketplace, “NFTs can be minted for digital files of copyrighted which said in July 2021 that it had become the world’s works, such as art works, graphics interchange formats largest digital marketplace for crypto collectibles. (GIFs), images, videos, collectibles, in-game assets Change of ownership of an NFT is recorded in a block (virtual avatars and video game skins), music and much on the blockchain, and as each block records only one more,” says Nguyen Thi Hong Anh, a partner and head transaction, only one owner is recorded thereon. of the IP and technology practice group at Indochine The term NFT has come into popular usage Counsel in Ho Chi Minh City. “Such tokenized digital among collectors and may have peaked earlier this files of the copyrighted works can be stored and sold year before beginning to cool. The number of NFT on the blockchain ledger, and NFTs can help people sales for June 2021 is about half of what they were easily verify the ownership thereof.” during their peak in March, according to industry She adds that creators of NFTs can include their tracker NonFungible.com. trademarks to brand their digitized assets, so that they The top NFT at OpenSea, by volume, is may utilize the blockchain technology in their business. CryptoPunks, which launched in 2017 as a fixed-set of “ that provide technical solutions 10,000 items. OpenSea says that sales of the individual for resolving technical problems in association with pieces of the collection have raised more than 200,000 the creation of NFTs, and innovations utilizing NFTs

The top NFT at one popular marketplace is CryptoPunks, which launched in 2017 as a fixed-set of 10,000 items. Sales of the individual pieces of the collection have raised more than 200,000 ether for sellers – an astonishing US$500 million.

12 Asia IP JUNE-JULY 2021 "Although blockchain technology "NFTs can be minted for may transact IP rights more digital files of copyrighted efficiently while minimizing the works. Such tokenized digital fraud possibility, there still is files of the copyrighted a long way to go to convince works can be stored and the government and/ sold on the blockchain or rights owners ledger, and NFTs can help to play their roles people easily verify the only through ownership thereof." —NGUYEN THI HONG ANH, partner and head the blockchain of the IP and technology practice group, Indochine technique." Counsel, Ho Chi Minh City —C. F. TSAI, managing partner, Deep & Far Attorneys-at-law, Taipei "Without an express IP licensing or assignment agreement, ownership "Since NFT of an NFT will not grant data is stored in ownership of the underlying cyberspace, there IP rights. An NFT owner is a riskSUBSCRIBER-ONLY of non- may not be permitted permanency and to exploit the NFT in losing access to a way violating the digital assets underlying IP rights." linked to CONTENT —SHAOBIN ZHU, partner, Morgan, NFT." Lewis & Bockius, Palo Alto and Shanghai —RANIYA OCKVALYNIE, associate, K & K This content is reserved for our registered"Counterfeiting users remains Advocates, Jakarta and/or subscribers an issue associated with NFTs. For instance, "An owner may To read the latest issue, register for free buyers might not be only claim ownership of aware whether some that specific NFT byhe clicking the ‘REGISTER’ link above digital art they spent bought and may thousands of dollars only exclude othersTo read all back issues, and gain access to on is an original from claimingexclusive subscriber-only content, subscribe to work or merely the ownership of hisAsia IP by clicking on the ‘SUBSCRIBE’ link above one." specific NFT. —RISTI The NFT owner WULANSARI, partner, K & K does not own Advocates, Jakarta the underlying digital asset from which such NFT "When a party purchases an was created." NFT, they cannot exercise —ARJEL P. DE the underlying IPRs for the GUZMAN, founding director, OPTMARKS, Manila digitalized work, such as rights to reproduce, distribute copies, publicly perform, display, or make derivative works of the works attached to the NFT." —STEVEN JACOB, foreign associate, Indochine Counsel, Ho Chi Minh City

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for resolving technical problems may be protected partner at K & K Advocates in Jakarta. “For instance, by patent, provided that such innovations satisfy buyers might not be aware whether some digital art patentable conditions provided in the applicable laws,” they spent thousands of dollars on is an original work she says. “For example, under the IP law of Vietnam, or merely the counterfeit one.” such technical solutions must be in the form of a She also adds that, specifically in Indonesia, the product or a process, and the patentable IP must be NFT scheme is yet to be governed and is still poorly novel, contain an inventive step and have industrial understood. applicability, though some computer programs are “Therefore, the legal system should be able to excluded from patent protection in Vietnam.” adapt existing laws and principles to the NFT scheme C. F. Tsai, managing partner at Deep & Far as was done for online activities,” she says. Attorneys-at-law in Taipei, adds: “The way NFTs She adds: “In the event of a copyright transfer interact with a blockchain may seek IP protection (from the perspective of Indonesian copyright law), if statutory requirements are met. It may be a new the rights must be transferred back to the creator after industry if a specific NFT uniquely represents a specific 25 years. However, in relation to the NFT scheme, in IP right.” practice, it is still unclear considering the immutability of the blockchain where once the tokens are issued, NFTs and IP implications nothing can be done to change the state of the NFT and One of the biggest advantages of leveraging NFTs is its associated rights.” the IP rights owner or creator’s potential ability to There are, of course, other risks involved. “Since profit from subsequent sales of works. However, the NFT data is stored in cyberspace, there is a risk of non- challenges involve counterfeit issues, a lack of specific permanency and losing access to digital assets linked regulations and laws, terms of ownership and other to NFT,” says her colleague, Raniya Ockvalynie, an potential risks.SUBSCRIBER-ONLY associate at K & K Advocates. “Although it has been said that NFTs will largely Tsai adds, “As the blockchain was well-introduced, help to curb , counterfeiting remains an creative or inventive new technologies thereof may issue associated with NFTs,” says Risti Wulansari, a no longer be easy [to create]. Although blockchain CONTENTtechnology may transact IP rights more efficiently while minimizing the fraud possibility, there still is a long way to go to convince the government and/or right owners to play their roles only through the blockchain This content is reserved fortechnique. our registered From one perspective,users it needs some genius to seek IP protection for a new NFT technique. and/or subscribersFrom another perspective, it needs much effort to successfully provide escrow for different types of NFTs for different IP rights.” To read the latest issue, registerFor Shaobin for Zhu, free a partner at Morgan, Lewis by clicking the ‘REGISTER’& Bockius link who above splits his time between Palo Alto, California, and Shanghai, the ownership of an NFT may be different from that of the underlying IP rights. To read all back issues, and“Without gain accessan express to IP licensing or assignment agreement, ownership of an NFT will not grant exclusive subscriber-onlyownership content, of thesubscribe underlying toIP rights,” he says. “As a Asia IP by clicking on the ‘result,SUBSCRIBE an NFT owner’ link may above not be permitted to exploit the NFT in a way violating the underlying IP rights.”

Limited IP rights IP rights associated with NFTs are also limited. According to Arjel P. de Guzman, founding director of the OPTMARKS brand protection and IP consultancy in Manila, it must be understood that a purchaser of an NFT only has ownership over that specific NFT he purchased – nothing more, nothing less. He says that ownership of an NFT does not vest interest or ownership over any intellectual property, and particularly not over the copyright of the original Athletes have profited off the NFT business. Luka Garza, a senior work embedded into an NFT. centre on the University of Iowa’s 2020-2021 intercollegiate “An owner may only claim ownership of that basketball team and the first U.S. collegiate athlete to auction specific NFT he bought and may only exclude others off an NFT, sold a card for more than 19.9111 ether (US$41,000) in April 2021. from claiming ownership of his specific NFT,” he says. “The NFT owner does not own the underlying digital

14 Asia IP JUNE-JULY 2021 asset from which such NFT was created. NFT ownership also does not vest the right to copy or distribute the underlying digital asset. So to avoid legal quandary, a creator should ensure that he has first secured permission from the copyright owner of the underlying digital asset he used to create his NFT. General copyright laws provide exclusive rights to the owner of a copyrighted work. These rights include the right to reproduce, prepare derivatives, distribute copies, publicly perform, and publicly display these original copyrighted works.” He adds that at the end of the day, stakeholders should be circumspect before licensing, assigning, or transferring an IP right. “Fairly basic is the requirement for stakeholders to know the difference between licensing and assignment of IP rights,” he says. “Owners must bear in mind that in an assignment, an owner divests himself of ownership he/she should consider the scope of the IPRs license and as a result,SUBSCRIBER-ONLY will have no control over the assignee’s they grant to a buyer of the NFT under the related smart subsequent use of the transferred IP rights. On the contract or T&Cs, so that the rights they grant do not other hand, licensing allows the owner to maintain his exceed the rights they are allowed to grant under the IP rights but, to some extent, authorizes a third party said IPRs license agreement. And the licensor in an IPRs to exercise some of his rights relativeCONTENT to the IP asset in licensing agreement in respect of an NFT must ensure some specific and restricted manner.” that he/she is the legitimate owner or legal licensee of Meanwhile, Steven Jacob, a foreign associate at the related IPRs before making a grant to the creator Indochine Counsel in Ho Chi Minh City, says that IP of an NFT, and has legitimate rights to grant a license rights owner of the Thisoriginal content works associated is reserved with the forunder our suchregistered IPRs licensing users agreement, especially NFTs may grant limited rights to the purchaser of the where there are co-owners or co-authors of the IPRs NFT under a smart contract, or terms andand/or conditions subscribers to be licensed or third party IPRs are combined in the (T&Cs) controlling the sale and purchase of the NFTs licensed work.” on the blockchain. “This means when Toa party read purchases the latest an NFT, issue, Enforcing register and preservingfor free NFTs they have the ownership rightsby clicking for the NFT the itself, ‘REGISTER’ Like other link ways above of enforcing rights and preserving which is recorded on the blockchain, but cannot items, companies, creators and artists should consider exercise the underlying IPRs for the digitalized other means of intellectual property protection for their work, such as rights to Toreproduce, read all distribute back copies,issues, original and gain creations. access “They canto do this by increasing their publicly perform, display, or make derivative works enforcement efforts against unauthorized uses of their of the works attachedexclusive to the NFT, subscriber-onlyexcept for the case protected content, content subscribe in NFTs,” saysto Ockvalynie. “Another where the owner ofAsia the IPIPRs by transfers, clicking assigns, on the or ‘SUBSCRIBEthing to consider’ linkis the aboveIP owner who grants licenses licenses them expressly in such smart contract or to third parties for use of their IP should consider T&Cs that control the sale and purchase of the NFT,” factoring NFTs into the scope of that license. Unless he says, adding that the creation of NFTs attached specifically licensing the work for use in NFTs, it to digitalized works that are based on underlying may be wise to expressly restrict the licensee from creations that have been copyrighted , and storage creating NFTs based on the licensed work. In of them on a blockchain ledger for sale via auction addition, we also advise clients or creators to seek legal platforms is one method for exploitation of the IPRs. counsel before using third party IP in their NFTs “Therefore, when licensing IPRs, the owners of to ensure that their IP rights are adequately protected.” the IPRs should consider whether to include in the Zhu agrees, adding that the creator should scope of the license the right to exploit the IPRs by way expressly state in the written description of an NFT of creation and sale of an NFT on the blockchain,” he that they reserve all their IP rights, which will not be says. “If so, this additional right should be negotiated licensed and transferred along with the sale of the NFT. and royalties payable by the licensee to the licensor of “They can ask the buyer to e-sign the above the protected works.” restriction agreement,” he says. “If the buyer breaches He adds, “In addition, if the creator of an NFT the contract, the seller can enforce its rights by for sale on the blockchain is the licensee in an IPRs asserting a breach of contract claim along with IP licensing agreement with the underlying IPRs owner, infringement claims.” AIP

JUNE-JULY 2021 Asia IP 15 FEATURES

THE UNTOUCHABLES Amidst social distancing in the Covid-19 pandemic, Chinese netizens have found significant comfort by interacting with their favourite animated characters online. Johnny Chan explores this unique phenomenon.

esearch shows that virtual idols have become compared with Rmb48 million (US$7 million) in a big business in China, one expected to be 2014, and is expected to grow to Rmb1.344 billion worth more than Rmb1.5 billion (US$230 (US$207.2 million) in 2027,” says Xia Zheng, president Rmillion) by 2023. On , a Shanghai-based of AFD China Intellectual Property in Beijing. “With counterpart to YouTube, there are more than 6,000 a booming , virtual idols have also triggered virtual streamers who attracted 60 million viewers in a lot of thinking in the field of IP. For example, a the first quarter of 2019. virtual idol is founded on the basis of its image “Indeed, the virtual idol industry has been and the technology behind it, which may involve rapidly growing and spreading across the sectors of copyright and neighbouring rights, trademark and/ e-commerce, music, product endorsement, variety or patent issues, and even involve unfair competition shows, etc, in recent years. The market size of practice. Protection of a virtual idol may involve the China’s virtual idol industry reached about Rmb508 issue of whether overlapping protection of rights can million (US$78 million) in 2020, a ten-fold increase be provided.”

16 Asia IP JUNE-JULY 2021 Especially in the field of copyright, with respect virtual idols are also commercialized through on- and to virtual idols, the copyright ownership, the right of offline performances such as endorsements, variety dissemination via information network, performers’ shows, films and television, live streaming, content rights, and the rights of producers of audio-visual payment, derivative sales, etc. They are involved in fields recordings have all aroused some discussion. “In such as gaming, animation, film and television, music, addition, the key to realize the commercial value of a advertising, e-commerce, short video and publishing,” virtual idol lies in whether it can obtain high popularity says Cherry Guo, a senior partner at Beijing Tiantai and influence, which depends heavily on the circulation Law Firm. “So how can virtual idols integrate with of the fan works created based on the virtual idol. different media to maximize commercial values? From This is likely to cause issues. traditional to new media, the forms of communication Thus, how to strike a balance between attracting have undergone earth-shaking changes along with the public attention and combating squatting, copycatting, development of computer and network technology. plagiarism and other infringements is also a challenge Virtual idols can realize the integration with various facing the virtual idol industry,” Zheng says. media so as to realize their commercial values as long In terms of trademarks, registrable elements as technology permits.” of a virtual idol mainly include the name of the Virtual idols can display their images, personalities character and the iconic character image, Zheng says. and talents by taking advantage of social media, online Relevant marks can be registered in Classes 9, 35, 41, video, music and live streaming platforms to output 42 or others. “Actually, a case about the trademark quality performances and ideas, constantly gain protection of a virtual idol was selected as one of attention, accumulate popularity and then covert fans 2019’s Top 10 trademark opposition cases by the China into purchasing power to realize commercialization, National Intellectual Property Administration. In that Guo says. “One of the most important ways to realize case, the opposedSUBSCRIBER-ONLY party’s application for registration of virtual idol traffic is to cooperate with e-commerce the trademark “洛天依 Luo Tianyi”, which is identical channels. Virtual idols can be used as their with the name of a popular virtual character, was spokespersons or anchors. The higher the integration successfully opposed because the relevant public between virtual idols and channels, the more the would believe that the designated goodsCONTENT of the opposed commercial values.” trademark are from or have a specific connection [to Virtual idols can interact with fans in real time the virtual character], and that it infringes the existing through live streaming, gaming and social media earlier right.” platforms, as well as getting direct flows or reward With all that beingThis said, content the virtual is idol reserved industry forshares. our Just registered like real idols, users a good operation of fans is still in a very early stage of development, so there is can maximize commercial values, she says. “The still a lot of commercial value to be developed,and/or and the subscribers music of virtual idols can earn income through the aforementioned issues will also receive more and more dissemination of music and short video platforms. attention, she says. The style of music, quality of production, creativity of To read the latest issue,marketing, register intensity for offree publicity and so on determine Law & Order by clicking the ‘REGISTER’the size of linkits revenue.” above According to the existing IP laws in China, the following By strengthening cooperation with literature, options can be considered to protect their virtual idols’ animation and video platforms, virtual idols can play rights, such as copyright, Todesigns read and all patents. back issues,some and novel gain and access animation to characters that cannot be “Pursuant to the copyright law revised in 2020, presented by real people, so as to meet the audience’s it is our opinion thatexclusive a virtual idol subscriber-only can be regarded fantasy content, of perfect subscribe characters, to thus realizing their as works of fine art,Asia photograph IP by clickingor audio-visual, on the so commercial‘SUBSCRIBE values,’ link she above adds. “With continuous the appearance of a virtual idol shall be protectable discovery of more commercial values, the application under such law,” says Haoliang Mu, a senior lawyer at of virtual idols will become more extensive, but the NTD Intellectual Property Attorneys in Beijing. “As for competition will also become more intense. Therefore, designs, if the virtual idol is novel and fits for industrial the commercial values of virtual idols can be maximized application, an application for design can be filed only through hard technology, careful management before the virtual idol being disclosed to the public.” and fully mastering the psychology of consumers.” Last but not least, an application for invention can be considered in case some new technical solutions are Never Back Down created for generating the virtual idol, says Mu. As the virtual idol industry is new, there are bound to be some tricky IP challenges, but no worries – you can The Secret of My Success learn to identify and overcome them from our experts! Regardless of how novel a virtual idol is, it must integrate “Virtual idols have attracted China’s digital with different media to unleash all commercial values, generation that has grown up with gaming and anime. or it is simply a failure. They are widely used in promotion campaigns and “Although virtual idols are different from real live streams in China’s retail and e-commerce sector. idols, there is no essential difference between them in For instance, in May 2020, Tmall introduced five the ways of realizing commercial values. Like real idols, top virtual stars, including Luo Tianyi, for a special

JUNE-JULY 2021 Asia IP 17 FEATURES

as trademarks can prevent others from using the same or similar elements and more importantly, leave the door open to lucrative licensing and merchandizing agreements, Meng says. “Also, although copyright ownership of a virtual idol in China arises automatically upon completion of the creation of works, registration is advisable because copyright registration serves as facie proof of ownership, which greatly facilitates enforcement in China.”

Outbreak Luo Tianyi – We have been associating virtual idols with China, but “the world’s have yet to link them with other high-tech jurisdictions first Chinese such as Japan and South Korea. Does that mean those with places are unable to compete with China in this sector? two kinds of “The answer is no. In fact, numerous virtual idols voicebanks” – that are created by the Japanese and Koreans have begun is available for to gain traction in China in recent years. Actually, only download. since the first domestic virtual idol – Qing Na, in 2001 – China then started to explore the development and promotion of virtual idols. With rapid advancement of artificial intelligence, motion capture, extended SUBSCRIBER-ONLYreality, three-dimension and other technologies, the commercialization of virtual idols is now supported materially. From 2019 onward, corporations such as Tencent, Alibaba, ByteDance, NetEase, Kuaishou promotion via Taobao Live. The idolsCONTENT interacted with and Bilibili have become very optimistic about this fans during the broadcast while promoting goods for industry [and have made] significant investments. The global ,” says Tim Meng, managing partner prospects of Chinese virtual idols are therefore great,” at GoldenGate Lawyers in Beijing. “As virtual idol is says Bing Guan, a partner at East & Concord Partners a new sector, there Thishas been content no single is regulation reserved or forin Beijing.our registered “Complementing users the Going Out Strategy, even precedent to deal with it. As a result, existing China will design its virtual idols for global fans and doctrines and policies might not be enoughand/or – subscribersa will capture more market shares of the industry comprehensive analysis is needed to address different worldwide. Yet, the development, design, promotion problems arising from various aspects of virtual and commercialization of virtual idols are bound to idols. Although the characterTo readitself is the fictional, latest actors issue, involve register copyright, for patent free and trademark issues. For and artists in the real worldby provide clicking the characterthe ‘REGISTER’ cases of infringinglink above foreign IP, Chinese courts tend with their voice and music. Typically, a team of not to exercise jurisdiction. Relevant parties should engineers, content creators and artists together therefore pay attention to tightening their compliance make contribution to theTo development read all back of a virtual issues, and and risk gain management access when to exporting idols.” idol. An idol normally incorporates photographs, In addition to the technical support of AI, mocap, music, names or logosexclusive of brands, subscriber-onlywhich involve the XR, content, 3D, etc., thesubscribe continuous to increase of dividends, use of IP. For example,Asia using IP theby image clicking of a celebrity on the ‘internetSUBSCRIBE traffic ’ andlink the above popularization of the culture, may trigger his/her publicity rights which entitle the the local virtual idol industry will be ushered in a celebrity to control the commercialization of his/her new round of growth. “Foreign investors will also be identity. Without prior authorization, using the image optimistic about it and hence join the ranks of capital may be deemed as infringement. This is also true competition,” Guan says. “In terms of law, Article 28 of for the use of a trademark, as using a trademarked the Civil Procedure Law as well as the Copyright Law, brand without a license can result in liability for the Trademark Law and the Patent Law all clarify that infringement. That said, a right purchase and/or China implements the principle of absolute territorial license agreement should be in place before the design jurisdiction. The CNIPA has also clarified the IP of a virtual idol is finalized. Besides, if a developer protection of virtual idols through the trademark outsources parts of its development to other entities, case of ‘Luo tianyi’ and other cases. Our nation can the question with regard to the right owner of the therefore provide robust protection for virtual idols.” virtual idol will become complex unless it has been Last but not least, China has issued a series of clearly addressed in the agreements between the policies to encourage foreign investment, she says. “It developer and its subcontractors.” is believed that under the combined effect of various As a newly created identity, marks or logos may be factors, foreign capital will favour the virtual idol featured prominently in a virtual idol; it is worth noting industry and our virtual idol industry will maintain that registering certain elements of a virtual idol such rapid growth.” AIP

18 Asia IP JUNE-JULY 2021 "Virtual idols have triggered a lot of thinking in IP. A virtual idol is founded on the basis of "Virtual idols have its image and the technology attracted China’s digital behind it, which may generation. In May 2020, involve copyright and Tmall introduced five neighbouring rights, top virtual stars for a trademark and/or patent special promotion issues, and even involve via Taobao unfair competition Live. The idols practice." interacted with —XIA ZHENG, president, AFD China fans during the Intellectual Property, Beijing broadcast while promoting goods for global brands." —TIM MENG, managing partner, "From 2019 onward, GoldenGate Lawyers, Beijing corporations such as SUBSCRIBER-ONLYTencent, Alibaba, ByteDance, NetEase, Kuaishou and Bilibili CONTENT have become very optimistic about this "It is our opinion industry and have made significant that a virtualThis content idol is reserved for our registered users can be regarded as investments. works of fine art, and/or subscribers The prospects of photograph or Chinese virtual audio-visual,To so read the latest issue, register for freeidols are great." the appearanceby clicking the ‘REGISTER’ link above—BING GUAN, partner, East & Concord of a virtual Partners, Beijing idol shall be protectableTo read all back issues, and gain access to under suchexclusive subscriber-only content, subscribe"Although to virtual idols law."Asia IP by clicking on the ‘SUBSCRIBE’ linkare abovedifferent from real —HAOLIANG MU, idols, there is no essential senior lawyer, NTD Intellectual difference between them Property Attorneys, Beijing in the ways of realizing commercial values. Like real idols, virtual idols are commercialized through endorsements, variety shows, films and television, live streaming, content payment, etc." —CHERRY GUO, senior partner, Beijing Tiantai Law Firm, Beijing

JUNE-JULY 2021 Asia IP 19 FEATURES

SECURING INTANGIBLES THE MONEY MADE ME DO IT If you fail to protect your intangible assets, they will come to be possessed by evil entities such as trolls, and that can cost a fortune. Johnny Chan conjures his team of experts for advice against all insidious foes.

s much as any of us might prefer it, solving be essential for the company to establish itself in the how to best manage IP growth and protection market, to blocking competitors moving into the same doesn’t always have the same answer. As we product space and for attracting investors needed to Areach the 18-month point of the global coronavirus grow the business,” Cobden says. “Companies should pandemic, budgets for such things are generally low, prioritize protecting the IP that is most important to and that affects how IP rights owners will spend their the business and decide what IP protection issues can money, says Andrew Cobden, counsel at Hogan Lovells be dealt with later on when the company has more in Hong Kong. resources.” “Undoubtedly, obtaining wide-ranging IP Issues relating to the ownership of IP and protection can be expensive for a company on a limited confidentiality ideally should be clearly agreed in budget. However, depending on the company’s type of writing with employees, independent contractors business, IP may form its most important assets and and business partners at the outset, he says. “This is

20 Asia IP JUNE-JULY 2021 usually relatively straightforward in terms of drafting Boosting IP values through mergers and acquisitions employment contracts and commercial agreements.” Mergers and acquisitions can be a double-edged sword A major concern for innovative companies for IP value, says Edward Chatterton, co-head of IPT, on a limited budget is protecting their inventions. Asia, at DLA Piper in Hong Kong. “They carry with “Preparing and filing patent applications can be them the possibility of significantly enhancing IP value, expensive; therefore, if the company does not have the just as much as they can negatively impact IP value, immediate resources to apply for patents, it should leading to write-downs and potentially worse. The key ensure that it does not prevent itself from obtaining to success is to prioritize the IP strategy, the aim of a patent in the future. Where possible, this means not the acquisition and its implications for IP value, both disclosing the invention to anyone without a non- positive and negative, at the earliest possible stage.” disclosure agreement, i.e. keeping it a trade secret,” Very often, IP value is one of the key motivating he adds. “On the other hand, the company should still factors behind the acquisition. “In these cases, the consider conducting a freedom-to-operate analysis to reasons for the acquisition are clear and the chances ensure the company’s invention would not infringe any of IP value being enhanced through merger are higher. third party’s existing patents.” IP value stands the greatest chance of being enhanced If the company anticipates an increased IP budget where there is clear strategic alignment around one in the coming years, it can file a U.S. provisional patent or more key factors,” Chatterton says. “For example, application first to obtain an earlier priority date for brand growth may be enhanced through access to when it applies for a full patent within the next 12 better distribution channels, more capacity for new months. “The description of the invention does not product development or more effective marketing and need to be as detailed as for a full application and promotion. The heft provided by a larger, established claims areSUBSCRIBER-ONLY not required, hence some of the work may be company to a smaller, up-and-coming brand are done by the inventors themselves with some revisions obvious. Similarly, the larger brand buys some of the from an experienced patent attorney,” he explains. “If more intangible virtues of the smaller brand, including the IP budget is still limited in a year’s time from filing authenticity and a clear brand story.” the provisional application, theCONTENT company can consider In the patent space, portfolios which dovetail with filing a Patent Cooperation Treaty application, which the buyer’s existing patent portfolio stand the greatest then gives the company about 30 months to decide in chance of creating added value. A patent portfolio which jurisdictions to file national patent applications. which complements the existing portfolio, whether by Having only oneThis or two content patents inis key reserved markets may for ourcreating registered a defensive usersmoat against competitors, access be sufficient to avoid losing business to competitor’s to cutting edge technology which is additive to the products. In appropriate situations,and/or the patents subscribers can existing portfolio or which gives the buyer a bridgehead also be licensed to others to generate revenue.” into new, complementary fields, are the ones which Trademarks can usually receive some protection stand the greatest chance of success. But the buyers even if unregistered, butTo ifread so, they the need latest to be relatively issue, registerneed to be awarefor free of the double-edged nature of each well-known, he reminds.by “For clicking countries suchthe as‘REGISTER’ China, of these link factors, above he says. “For example, will the new though, it is worth registering the house-mark and brand complement or cannibalize the buyer’s existing key brands in the business’s core markets. Trademark brands? The buyer should also be aware of the risks applications are relativelyTo read inexpensive, all back although issues, they andthat gain acquisition access by an to established company of a young, can become more costly if complications arise such as authentic brand can taint or, at worst, destroy the values opposition from exclusivethird parties. Insubscriber-only most countries, once content, for which subscribe the younger brandto is known, particularly registered, a trademarkAsia IP is byvalid clicking for 10 years.” on the ‘SUBSCRIBEwhere the established’ link above company has been subject to Copyright arises automatically and does not brand controversy. Depending on the industry, for need to be applied for or registered although some many consumers, the points of difference which make countries, notably both the United States and China, the younger brand are fundamental. If they are, how have voluntary (and inexpensive) registrations to does the buyer aim to minimize such potential damage? facilitate enforcement, he notes. A ‘loose’ structure in which the acquired brand joins In addition, companies can consider domain a stable of other independent brands which are name registrations and customs recordal, which are nurtured to growth is very often a successful approach, also relatively inexpensive. “The former can obviously particularly if the founders remain involved. These are prevent squatters from registering your trademark really key questions and corporate history is littered or trade name as a domain name. As for countries with examples of younger brands being acquired by which allow customs recordal, this will help customs established players only for the younger brand to fail identify and detain suspected infringements when shortly after.” they are checked by customs at the border,” he All in all, the key lessons are: think about what you concludes. “More generally, enforcing IP rights can be want to achieve, plan early and put that plan into action expensive but, in many countries, administrative or as part of the acquisition process, he adds. “While criminal measures can be taken against infringers by nothing is guaranteed, these factors result in the government enforcement agencies, such as customs.” greatest chance for enhancing IP value through M&A.”

JUNE-JULY 2021 Asia IP 21 FEATURES

"Obtaining "Convoluted "Mergers and "In order wide-ranging IP arrangements acquisitions carry to build IP protection can whereby the the possibility value to its be expensive. founder owns of significantly most extent, Companies key patents or enhancing IP value, among other should prioritize other IP and just as they can things, an protecting the then licenses negatively impact IPO company IP that is most them to his own IP value. The key should focus important to the companies are to success is to on conducting business and not going to be prioritize the IP due diligence decide what IP anywhere near strategy, the aim and clarifying protection issues so attractive to of the acquisition the ownership can be dealt with investors as a and its implications of IP to avoid later on when company that has for IP value at the the risk of the company has an easy-to-follow earliest possible infringement." more resources." IP portfolio." stage." —BIN ZHANG, deputy —ANDREW COBDEN, —JOHN EASTWOOD, —EDWARD CHATTERTON, director, CCPIT Patent & counsel, Hogan Lovells, Hong Kong partner, Eiger, Taipei co-head of IPT, Asia, DLA Piper, Trademark Law Office, Beijing SUBSCRIBER-ONLYHong Kong CONTENT

This content is reserved for our registered users and/or subscribers

Building IP values for initial public offerings copyright, trademark and its possible The number, quality andTo management read the latestof IP are issue, registerrenewal; forb) checking free out technology transfer important when evaluatingby the clicking value of thea listed ‘REGISTER’ contracts, link above licensing contracts, cooperation company. Therefore, it is crucial for IPO companies to and development contracts, commissioned have robust IP systems in place, says Bin Zhang, deputy development contracts, import and export director at CCPIT PatentTo & Trademarkread all backLaw Office issues, in andcontracts gain access and their to possible registration, Beijing. “Briefly, in order to build IP value to its most approval and recordation certificates; and c) extent, an IPO companyexclusive should focus subscriber-only on the following content,confirming subscribe all existing to or potential disputes aspects: Asia IP by clicking on the ‘SUBSCRIBEinvolving ’ patents,link above trademarks, copyright, 1. Making efforts to IP information disclosure proprietary technologies, domain names or including its potential risk, competitiveness, other IP. status, etc. 5. Strengthening the daily management of IP.” 2. Conducting IP assessment. 3. Applying for registration of related IP in a timely It is important for companies heading into an manner. IPO to have their IP asset situations streamlined, 4. Conducting due diligence and clarifying the says John Eastwood, a partner at Eiger in Taipei. ownership of IP to avoid the risk of infringement. “Convoluted arrangements whereby the founder owns The due diligence may cover: a) compiling key patents or other IP and then licenses them to his summary table of all inventions, utility models, own companies are not going to be anywhere near so designs, trademarks, copyright, , trade attractive to investors as a company that has an easy- names, proprietary technologies, domain to-follow IP portfolio. Investors want to see a company names, trade secrets; listing all other intangible that can stand independently. For that matter, it is also assets and corresponding proving documents; good if a company heading into an IPO has its IP unified making clear the status of the registration within the same entity, either at the headquarters level certificates of patents including the right to or in a special purpose vehicle in a jurisdiction with apply for a patent, proprietary technology, favourable tax treaties.” AIP

22 Asia IP JUNE-JULY 2021 FEATURES

7 KEY IP STRATEGIES IN THE PHILIPPINES

In this digital age, intangible assets, including intellectual property rights, are proving to be more valuable to businesses than tangible assets. Susan D. Villanueva, Patricia A. O. Bunye and Andrea Y. Alegre share seven key IP strategies for rights owners in the Philippines.

n this digital age, intangible assets, including The following are some practical considerations intellectual property rights, are proving to be more in formulating your IP strategy in the Philippines: valuable to businesses than tangible assets. It is Itherefore critical to develop an effective IP strategy Conduct IP audits to derive maximum benefit from one’s IP and for an If your business is just beginning to develop its IP IP owner to strategize how IP can help advance its 1strategy, you should consider conducting an IP audit. business objectives. The IP audit is a vital tool to review potential and existing IP strategy should not only be aligned with an IP assets, procedures, policies, and agreements, and organization’s business mission and vision. There evaluate how your IP is currently being managed. A must be top-to-bottom awareness of the value of thorough IP audit can identify opportunities and risks IP as a growth driver such that its protection and that would otherwise have been missed. It can also promotion become the business paradigm and part of detect potential issues on the rightful ownership or use the organization’s DNA and culture. of IP so that you can craft the necessary agreements

JUNE-JULY 2021 Asia IP 23 FEATURES

or revise those that are already in place. Even if your Register your IP as early as possible business already has an IP strategy, regular audits The Philippines follows the first-to-file rule for will ensure that your IP strategy is updated and 3both patents and trademarks. If you foresee that your comprehensive, and that all of your important IP is business will enter the Philippine market in the near protected and fully utilized. future, you should consider registering your IP ahead of time to ensure that it is available for use. Be aware of existing IP registrations For patents, it is also necessary to file your IP rights are exclusionary, i.e., they prevent other application before use or disclosure of the invention 2parties from using your IP. Accordingly, before you to retain novelty, which is required for patentability. begin to invest in a brand or a product intended for the Should you need time to decide on whether you require Philippine market or elsewhere, it is best to first assess patent protection in the Philippines, note that the whether it is already covered by another entity’s IP Philippines is a signatory to the Patent Cooperation rights. Apart from ensuring that your IP is registrable, Treaty (PCT). Instead of directly filing a patent being aware of existing IP registrations can also protect application in the local patent office, you may file under your business from potential infringement suits. the PCT, which allows applicants 30 months from the Prior to brand launch, a trademark search filing date of the international application to decide on should be conducted to determine the existence of whether to enter the country. In this case, the filing any identical or confusingly similar trademarks that date for the purpose of applying the first-to-file rule is might prevent the registration of your brand as a the international filing date. trademark. While this may appear to be an unnecessary For trademarks, ownership is acquired expense, trademark searches are relatively inexpensive solely through registration. You may therefore compared to having to change your brand name after consider filing early in order to prevent others from already incurring significant advertising and marketing appropriating your trademark, as well as to maintain costs, not to mention litigating any infringement suits. any pre-existing goodwill in the Philippines. While the If your business involves the development of Philippines requires actual use to maintain trademark technology, you should conduct a prior art search registrations, the registrant has a three-year window to assess whether the technology has already been from filing of the application to submit proof of use. disclosed elsewhere, which will prevent a patent from The registrant can use this window to prepare for entry being registered. If an invention is not patentable, into the Philippine market. you may consider conducting a freedom-to-operate For copyright, registration is not necessary search to determine whether you can use the invention for protection in the Philippines. Philippine law without risk of infringement. automatically protects copyrightable works from You may also consider conducting other IP searches the moment of their creation. Nevertheless, you depending on the type of IP you hold. IP searches may consider securing a Certificate of Copyright can cover copyright registrations/deposits, business Registration and Deposit from either the National name registrations, corporate name registrations, Library of the Philippines or the Bureau of Copyright domain name registrations, and registrations with the and Other Related Rights of the Philippine Intellectual Philippine Food and Drug Administration. Property Office, which functions as a receiving office

24 Asia IP JUNE-JULY 2021 for the National Library. Works in the field of law may advisable only when you expect to enter the Philippine also be deposited with the Supreme Court Library. The market within three years from the filing date of the certificate constitutesprima facie evidence of validity application. Otherwise, you may not be able to provide and ownership, which will be helpful in asserting the proof of use required to maintain registration. ownership when enforcing the copyright. Nevertheless, this issue will not arise if the additional It is also important to consider your budget. goods and services fall under the same class. Under Certificates of Copyright Registration and Deposit Philippine trademark rules, actual use for some of the are relatively inexpensive to obtain and have no goods or services in the same class constitutes use for maintenance costs. For trademarks, however, you the entire class. must regularly submit proof of use in order to maintain For patentable inventions, consider whether registration. Pre-emptive registration may be a acquiring a patent is appropriate for your business. If wasteful expense if the trademark registration ends you expect that the subject of the patent will quickly up being cancelled for failure to submit proof of use. become obsolete, a patent may be unnecessary. Meanwhile, registering a patent takes several years and Moreover, while patents prevent others from making, can entail significant expenses. Maintaining a patent using, selling, and importing the patented product, a also requires the payment of annuities. You should patent application requires that the patent be published. therefore evaluate whether the Philippines is a key Trade secrets are recognized as intellectual property market for your patented product or process. rights in the Philippines, and may sufficiently protect your invention without the necessity of disclosure. Consider future business goals 4 Before filing any application to protect your IP Enforce your IP rights, it is important to consider future business goals. A comprehensive IP strategy does not end with the In the Philippines, trademark registrations cover 5registration of the IP assets. To get the fullest benefit particular goods and services and generally afford of your IP, ensure that third parties are not using them protection only where such goods and services are to the detriment of your business. Infringement cases concerned. If you anticipate that your business will can be filed to protect against unauthorized use of your provide other goods and services in the future, you registered trademark, patent, or copyright. Sending can already indicate them in the trademark application cease-and-desist letters is also an efficient way to stop to avoid having to apply again. However, this is the selling and importation of counterfeit goods.

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For trademarks, trademark watches can ABOUT THE AUTHORS be conducted to identify any applications or Susan D. Villanueva heads Cruz Marcelo & registrations that may prejudice your trademark Tenefrancia’s Intellectual Property Department registration. Once a trademark that is identical or and is the principal litigator of intellectual property litigation and enforcement cases. She was the confusingly similar to yours has been identified, you litigator of landmark intellectual property can file a cancellation or opposition case. Even if cases in the Philippines where the Supreme your trademark is not registered in the Philippines, Court first declared a trademark as internationally well-known and affirmed Susan D. Villanueva you can still bring suit if your trademark is a well- the jurisdiction of the Intellectual Property known mark. Office over administrative cases for Philippine IP registrations can also be recorded violations of intellectual property rights. She also successfully defended before the Supreme Court search warrants issued against suspected with the Bureau of Customs. Seizure and forfeiture infringers in an enforcement action for the liquefied petroleum gasoline at the border is an efficient way to protect your IP industry. She successfully argued before the Supreme Court to affirm the since it is an expedited procedure. abandonment of a patent on the ground of public interest.

Patricia A. O. Bunye heads the Mining & Natural Commercialize your IP Resources Department and the energy practice After conducting an IP audit and assuming the group of Cruz Marcelo & Tenefrancia and is also a 6 partner in the Intellectual Property Department. required registrations have been obtained, you can Her IP practice is focused on trademarks and make the most of your IP by identifying possible IP IP commercialization, including licensing assets for licensing. An IP valuation that specifically and franchising, and the registration of food, cosmetics, and pharmaceutical products with considers the Philippine market can determine the the Food & Drug Administration. She was monetary value of IP assets for decisions to license in the president of the Licensing Executives Society International (LESI) from 2016- Patricia A. O. Bunye the Philippines and other jurisdictions. 2017, the first Filipino and Southeast Asian Once you have decided to license your IP, ensure to hold the position. In 2020, she received LESI’s Peter K. Hess Award that the license agreement complies with applicable of Achievement which is conferred on LESI members who have made laws. In the Philippines, contracts involving the lasting contributions to LESI and the licensing profession. transfer, assignment, or licensing of all forms of Andrea Y. Alegre is an associate in Cruz Marcelo intellectual property rights are generally considered & Tenefrancia’s Intellectual Property Department. She holds a Bachelor of Science degree in Industrial technology transfer arrangements, which must Engineering from the University of the Philippines, have all of the mandatory provisions and none of where she graduated magna cum laude. Her the prohibited clauses specified by the Intellectual practice focuses on patent and trademark prosecution. Alegre has likewise assisted in advising Property Code of the Philippines. Otherwise, they clients on IP policies, and in the review and may be rendered unenforceable unless the agreement registration of IP licensing agreements and data privacy agreements. is approved and registered with the Documentation, Andrea Y. Alegre Information and Technology Transfer Bureau of the Philippine Intellectual Property Office.

Cruz Marcelo & Tenefrancia Enlist the help of professionals 9th, 10th, 11th and 12th Floors Formulating your IP strategy in the Philippines One Orion, 11th Avenue corner University Parkway 7 Bonifacio Global City, Taguig 1634 can be a complex endeavor. IP laws and regulations Metro Manila, Philippines are different in every country and can frequently T: +632 8810 5858 change. The assistance of experienced professionals F: +632 8810 3838 E: [email protected] is invaluable in crafting a practical and cost-effective W: cruzmarcelo.com IP strategy. AIP

26 Asia IP JUNE-JULY 2021 FEATURES

IP strategies for educational institutions in the Philippines

As the Philippines works towards fulfilling the United Nations’ Sustainable Development Goals – including one aimed at promoting quality education – Editha R. Hechanova and Misael F. Costes examine how developing an IP strategy for schools can help the country reach its goal.

he Philippines, as a member of the United most spending toward the SDGs will go to the first Nations, committed in 2015 to the 2030 Agenda three priorities, particularly to health because of the for Sustainable Development comprising of 17 pandemic. In 2020, public spending on education Tgoals (SDGs) aimed at ending poverty and inequality, was only 13.5 percent of the budget, which was lower increasing the country’s productivity, addressing than the 2017 level of 17 percent. In a report of the climate change and protection of the environment; Programme for International Student Assessment these commitments are monitored by the Philippine (PISA) by the Organization for Economic Co-operation Statistics Authority (PSA). and Development (OECD) in 2018, 15-year-old Filipino Of the top SDGs, Quality Education comes only as students scored lower in reading, mathematics, and fourth priority, with No Poverty as first, Zero Hunger science than most of the countries participating in on second and Good Health and Well-Being on third. PISA 2018; no other countries scored lower than the With the country’s limited budget, it is expected that Philippines and the Dominican Republic.

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In the Philippines, public primary and secondary system fulfils the functions of: (i) providing rewards education, commonly known as “high-school,” for , (ii) identifying intellectual assets and are given free. The basic education system in the packaging them into protectable and transmissible Philippines now consists of one year of kindergarten, rights, (iii) disseminating technical information, and six years of elementary education, four years of junior (iv) controlling the commercialization of intellectual high school and two years of senior high school, assets. In this light, the following IP strategies may be or 13 years of compulsory education as mandated considered: by the Kindergarten Act of 2012 and the Enhanced Basic Education Act of 2013, which introduced the The school must have an IP Policy. Education and law K-12 programme. However, under the Philippine are being outpaced by technology. Children now start Constitution, only primary education is compulsory, their own businesses, post on social media and write and secondary education is voluntary. Given the blogs, all probably without being aware of intellectual government’s limited budget, the poor performance property and its effects on their activities. On a daily of Philippine high school students in the PISA, and the basis, a school creates and uses intellectual property, adoption of the K-12 programme, it becomes apparent including copyright. As indicated above, the K-12 that the private sector must be encouraged to invest in programme added a two-year specialized upper education. secondary education where students are allowed to choose a specialization based on aptitude, interests, The business of education and school capacity. There are four tracks that each The implementation of the K-12 Basic Education student in senior high school may choose from, Programme, particularly the addition of the Senior namely: academic, technical-vocational-livelihood; High School Programme to secondary education, has sports; and arts and design. Under the academic track, provided private individuals, schools, corporations, students are required to conduct and submit research organizations and foundations increased opportunity works on subjects they have chosen. Such an activity to take part in the development of the character and generates materials that are copyrightable. Similarly, life skills of the Filipino youth. The Senior High School the arts and design track cultivates and develops the Programme (Grades 11 & 12), as progression from the performative and creative talents and skills of the Junior High School (Grades 7-10), provides practical student, such as song composing, stage performing, instruction, work immersion or apprenticeship, and illustrating, sculpting, photography or choreography. entrepreneurship enabling the students to master Copyrightable materials may again be generated in concepts and skills to be employable, or to start his or the course of their studies. Unfortunately, almost all her own business after graduation, or go to college for secondary students are not aware of the copyrights that further education. are attached to their academic or artistic creations and Certainly, the government has the mandate the benefits that said copyrights provide to themselves to give quality education to its people, but given its and to their schools. The school, therefore, must have limited resources, and the need and growing demand a policy with regard to these creations and rights as for secondary education, the private sector can step well as to the ownership and use of the same, and the in several ways, e.g., owner, partner, donor. With the rewards attached to it. It is the responsibility of the introduction of K-12, many private schools have been school to inform the students of their copyrights and organized. A Filipino citizen or a domestic corporation, on how to properly protect them. 40% of which can be owned by foreigners, can establish The same is true with research and academic and operate a school for the enhanced basic education, creations of teachers. They are not well-informed subject to complying with the requirements of the of the copyrights that are attached to their creations Department of Education. and, without a clear policy on the ownership of the There is, of course, the long running debate of copyrights of the academic creations that are created whether a school should be treated like a business. pursuant to their employments, they do not know how While the traditional business enterprise’s goal is to claim the said right. to maximize profits for its shareholders, this view is With the spread of Covid-19, both public and evolving as awareness of corporate social responsibility private schools offering the enhanced basic education becomes one of its core objectives. Suffice it to say that have been forced to depart from the traditional face- educational institutions ought to be viewed as a social to-face mode of learning and adopt several alternative enterprise where making profits is essential for it to be modes, such as online learning or e-learning through able to sustain its existence, while serving the public the use of the internet; modular learning, where good. learning modules are distributed to the students for use during class sessions and then retrieved after the IP strategy students have answered the assessment questions Whether the school is for basic or higher education, therein; or a combination of online and modular modes whether it is public, private non-profit, or private for of learning. profit, intellectual property is central to its continuing The implementation of alternative modes of growth and that of its stakeholders. The school’s IP learning delivery, which required private schools to

28 Asia IP JUNE-JULY 2021 produce self-learning modules to be used for online International Inc. and its -based partner or modular learning, has made an important issue of Alkem Company liable of copyright infringement after the protection of copyrighted materials, as well as the finding that substantial portions of a social science infringement thereof. The possibility is high that the textbook produced by one of the parties were copied modules that were produced by the private school have, from another book, and ordered to pay the complainant, in some way, infringed the copyrights of the owners University Press of First Asia, about US$186,000. The of the materials used as module contents. This again decision has been appealed. It was reported that this highlights the need for a school intellectual property court decision is the third major copyright case in the policy which normally enumerates the measures to be Philippines’ education publishing. taken to avoid any form of infringement and identifies Moreover, most secondary schools, public and the competent person or persons to guard against said private, require their students to create and submit infringement. projects as part of their practical learning and for As an example, in a case decided by the Intellectual passing their subjects. Occasionally, we learn from Property Office of the Philippines, IPOPHL successfully the news of a student or a group of students winning enforced its judgment holding La Concepcion College, awards in the country or abroad for creating projects a private school located in San Jose del Monte City, that are worthy of awards or recognition. Bulacan, liable for copyright infringement. The In 2019, the Department of Education selected copyright infringement case arose from the complaint Best Six Projects of the 2019 National Science and filed by Raymund Sta. Maria Catabijan, author and Technology Fair (NSTF), sponsored by the Gokongwei publisher, who alleged that the school copied his Brothers Foundation (GBF). The said projects were workbooks and sold reproductions thereof to its selected from the winners of the individual and team students. The school was ordered by the IPOPHL to pay competitions under the physical science, life science, Catabijan damages amounting to about US$12,000. and robotics and intelligent machines categories. Also, In a more recent case handled by our firm, and the Technology Application and Promotion Institute posted by ABS-CBN news on February 18, 2021, the of the Department of Science and Technology (DOST- Makati Regional Trial Court on November 17, 2020, TAPI), in collaboration with DOST regional offices, resolved an 11-year copyright battle between two annually conducts the search for the outstanding publishers of education materials, finding EdCrisch patents or registrations, and research in the country,

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is at this stage where a significant portion of its overall value is lodged in intellectual property, and not paying attention to it could result in failing to consider returns from its IP rights. It could rely on advice from external sources, if this be necessary. As the school increases its resources, this would boost its capability to protect and exploit subsequent innovations.

To monetize its IPs. Admittedly, the main objective of even a private educational institution is not profit, but to be able to sustain its service for the public good, it has to support its existence and give to those who have invested in it reasonable returns that would encourage them to make more investments. In this regard, a school has to be open to licensing deals and alliances to exploit its IPs.

There is investment opportunity for education, particularly, secondary education in the Philippines including outstanding student creative research for and for those that have done so, and those thinking high school and college students through the Sibol about it, should also address intellectual property Award. issues to optimize the use of its resources. AIP The projects, award-winning or otherwise, may be patentable as inventions or registrable as utility models. The said project may also be registrable as industrial designs that can serve as a pattern for an industrial product or handicraft. As such, the novelty or newness ABOUT THE AUTHOR of the projects is important and must be maintained Editha R. Hechanova leads the HECHANOVA so that proper protection from infringement may be Group’s intellectual property law practice. acquired. The exposure of the projects to the public The HECHANOVA Group is made up of Hechanova & Co., Inc. an IP consulting without filing applications for their protections within firm handling IP prosecution, and other twelve months from the date of their public disclosure non-contentious IP, of which she is destroys their novelty. Lacking novelty, the projects president/CEO, and the contentious IP practice is handled by member cannot be protected from infringement. law firm Hechanova Bugay Vilchez Editha R. Hechanova It is, thus, important for secondary schools, & Andaya-Racadio, where she is both public and private, to give adequate attention to managing partner. The law firm’s work includes border control, enforcement, litigation, ADR, licensing, their intellectual property assets and the rights that transactional, corporate, immigration law and taxation. Hechanova are attached thereto, and form and adopt a policy for obtained her law degree from the Ateneo de Manila University, and a certificate in strategic business economics from the University of the suitable protection of their intellectual property Asia and the Pacific. She is also a certified public accountant and a rights such as trademarks or tradename, copyright, certified patent agent. inventions, utility model and industrial design, as well Misael F. Costes (“Mel”), an electronics and as dealing with internal IP issues such as educating communications engineer and lawyer, is the teachers and students, management of researchers, senior patent manager at Hechanova & Co., Inc. valuation, information dissemination and coordination. Prior to said employment, he served as legal officer of the Department of Education Regional An ideal intellectual property policy would include the Office III, in the city of San Fernando, Pampanga, creation of an intellectual property management office where he was connected for 10 years. Costes or unit, which is then provided with knowledgeable is a member of the Association of PAQE Professionals, Inc. (APPI), an association of Misael F. Costes (“Mel”) and competent personnel. patent agents who passed the Patent Agent Schools are also encouraged conduct training Qualifying Examination (PAQE) administered by activities or workshops to familiarize the students the IPOPHL. He lectures for the DOST-PCAARRD on invention analysis and assessment, prior art search, and patent application drafting. and school personnel of intellectual properties and the protection that are provided for them by law. With sufficient knowledge of their intellectual property rights, students and teachers become conscious of Hechanova & Co. Inc. their protection not only for their own benefit and that Hechanova Bugay Vilchez & Andaya-Racadio Ground Floor Salustiana D. Ty Tower of their schools, but for the public good. 104 Paseo de Roxas Avenue Makati City 1229 Philippines To set aside funds to protect IPs. A school in its start-up T: (632) 8888-4293; (632) 8812-5445 F:. (632) 8888-4290 phase may not have the resources to employ a full-time E: [email protected] IP specialist, or may be spending more time setting-up W: hechanova.com.ph and marketing its services. However, it may be that it

30 Asia IP JUNE-JULY 2021

FEATURES

IP Experts 2021

Japaneopolitics may be pushing Japan and the Despite such differences, it is safe to say United States closer than any time since the that increased technological cooperation between end of World War II. Japan and the United States will involve significant GA paper published by the Carnegie Endowment amounts of classified and unclassified intellectual for International Peace in Washington on July 29, property, which will provide challenging work 2021, declares that “in both Japan and the United environments for IP lawyers on both sides of the States, there is a growing recognition that national Pacific. security and alliance security involve more than just With this in mind, we turned to IP professionals military concerns and extend to new technology in the region in order to understand better what areas and their economic effects.” clients need today. Asia IP asked a large number Looming over the two allies, Carnegie says, is of professionals – mostly in-house counsel and a wide-ranging question of how to enable greater corporate legal managers – what they were looking science and technology research collaboration for from their legal service providers. From their for commercial and defense purposes, involving answers, we have compiled our list of 50 Japan IP such fields as artificial intelligence (AI), quantum Experts, those lawyers who understand just what information science (QIS), cybersecurity and space their clients need and are able to provide them with utilization. the best practical advice. “Competing domestic political and economic Today’s clients are looking for more than just a considerations in each country make this a degree from a top-notch university and a couple of particularly complex challenge for policymakers, decades of practice. In order to be an outstanding who can be expected to treat the international provider of intellectual property advice, a lawyer sharing or sale of assorted technologies differently. must also be capable of understanding how Still, there is little doubt that it is in the mutual intellectual property impacts the rest of his client’s interest of Japan and the United States to harmonize business, and be able to provide practical, real- their approaches and find acceptable ways to world, business-savvy advice. She must be able to enable deeper and broader science and technology provide sound advice on the current law, but also collaboration – and to do so expeditiously,” the needs to be able to understand coming trends paper says. which are likely to impact her client’s business. The paper delves deeply into the importance of Unlike days past when she might have played intellectual property in the expanding relationship just a bit role, today’s IP Expert is every bit a full- between the two countries, particularly in the realm fledged team member. of secrecy orders. Japan and the United States have Japan’s intellectual property market features quite different ways of designating national secrets several major players, and lawyers from those – while the United States provides classification firms are well-represented on our list: Anderson authority for information related to a broadly Mori & Tomotsune and Nakamura & Partners each defined category of national security, which could landed four lawyers on the list, while Abe, Ikubo & include economic or technology factors, Japan does Katayama, Hiroe & Associates and Nishimura & not. The list authorized through Japan’s Act on the Asahi each placed three. Lawyers working for global Protection of Specially Designated Secrets (SDS) is or international law firms, or the Japanese offices quite specific, and it is considered a positive list, of such firms, including Baker McKenzie, Hogan meaning that items not listed do not qualify. Lovells, Jones Day and Morrison & Foerster, each

32 Asia IP JUNE-JULY 2021 of which have strong IP practices and boast strong individual members of their IP teams, were not considered for inclusion on this list. But while big firms may have the lion’s share of the international IP market, Tokyo is also a place where a hard-working small or mid-size firm can also see great success. In fact, 26 different firms placed either one or two lawyers on the list, showing both the depth and the breadth of the skill of the country’s IP Experts. Most of the lawyers named to our list have multiple practice specialties. Many of them are litigators, while others concentrate on prosecution work or provide strategic advice. ••• Japan’s IP Experts is based solely on independent editorial research conducted by Asia IP. As part of this project, we turned to thousands of in- house counsel in Japan, Asia and around the world, as well as Japan-focused partners at international law firms, and asked them to nominate private- practice lawyers including foreign legal consultants, advisers and counsel. All private practice intellectual property lawyers in Japan were eligible for inclusion in the nominations process; there were no fees or any other requirements for inclusion in the process. Each IP Expert was given the opportunity to include their biography and contact details in print and on our website, for which a fee was charged. The final list reflects the nominations received combined with the input of editorial team at Asia IP, which has more than 40 years of collective experience in researching and understanding Japan’s legal market. All of them have something in common: they are experts in their fields and, in one way or another, they provide extra value for their clients. They are Asia IP’s Japan IP Experts. AIP —GREGORY GLASS

JUNE-JULY 2021 Asia IP 33 FEATURES JAPAN IP EXPERTS TOP 50 LICENSING & MEDIA & IT & PHARMA IP NAME FIRM PATENTS TRADEMARKS COPYRIGHT ENFORCEMENT FRANCHISING ENTERTAINMENT TELECOMS & BIOTECH LITIGATION Takanori Abe Abe & Partners a a a a Atsushi Aoki Seiwa Patent & Law a a Satoshi Hashimoto Hiroe & Associates a a Mami Hino Abe, Ikubo & Katayama a a a a Masanori Hiroe Hiroe & Associates a a a Takenori Hiroe Hiroe & Associates a a a a Tomoko Honami Kubota a a a Toshiaki Iiumura Yuasa and Hara a a a a Yoshiyuki Inaba TMI Associates a a a a Yoichi Inoue Asamura Patent Office PC a a a Tomoko Iwai Saegusa & Partners a Hitomi Iwase Nishimura & Asahi a a a a a Yoshikazu Iwase Anderson Mori & Tomotsune a a a Shinya Jitsushiro Shiga International Patent Office a a Chie Kasahara Atsumi & Sakai a a a a Eiji Katayama Abe, Ikubo & Katayama a a a a Hiroshi Kobayashi Abe, Ikubo & Katayama a a Kumpei Kogure Borders IP a Eiichiro Kubota Kubota a a a a Yoshio Kumakura Nakamura & Partners a a a Masatoshi Kurata Suzuye & Suzuye a a Noboyuki Matsubara Matsubara, Muraki & Associates a a a Mitsuko Miyagawa TMI Associates a a a a a Yutaka Miyoshi Mori Hamada & Matsumoto a a a a a a Yoshiteru Mizumoto Asamura Patent Office PC a Chikako Mori Sun East IP Firm a a Koji Murai Shinjyu Global IP a a Koyoshi Muraki Matsubara, Muraki & Associates a a Yasuhiko Murayama Shiga International Patent Office a Akihito Nakamachi Anderson Mori & Tomotsune a a a a Kenichi Nakayama Sugimura & Partners a a a Seiji Ohno Ohno & Partners a a a Naoko Omukai Nishimura & Asahi a a a Yoshifuni Onodera Mori Hamada & Matsumoto a a a a a Roppongidori Patent & Trademark Kan Otani Attorney a Akihiro Ryuka Ryuka IP a a Masahiro Samejima Uchida & Samejima Law Firm a a a a Yasufumi Shiroyama Anderson Mori & Tomotsune a a a a a a Shobayashi International Patent & Masayuki Shobayashi Trademark Office a a a Sonoda & Kobayashi Intellectual Yoshitaka Sonoda Property Law a a Wataru Sueyoshi Sueyoshi & Sato a a a a Kenji Sugimura Sugimura & Partners a Hiroshi Tamura Aoyama & Partners a a Shinichiro Tanaka Nakamura & Partners a a a a Kenji Tosaki Nagashima Ohno & Tsunematsu a a a Koichi Tsujii Nakamura & Partners a a a a a Hajime Watanabe Shiomizaka a a a a a Kozo Yabe Yuasa and Hara a a a a a Masayuki Yamanouchi Anderson Mori & Tomotsune a a a Kazuhiko Yoshida Nakamura & Partners a a a a

Extended biographies of lawyers highlighted above appear on Pages 36-39

34 Asia IP JUNE-JULY 2021 ABE, TAKANORI MANAGING PARTNER

ABE & PARTNERS PATENTS Matsushita IMP Building, 1-3-7, Shiromi, TRADEMARKS Chuo-ku, Osaka, 540-0001, Japan PHARMA & BIOTECH T: 81-6-69491-1496 IP LITIGATION E: [email protected] W: www.abe-law.com

Mr. ABE is an Attorney-at-Law, admitted in both Japan industry. He represented the first antibody patent and New York. He is currently a Guest Professor of Osaka infringement case in Japan and is currently involved in the University Graduate School of Medicine and formerly a drastic battle between brands and also the one between lecturer of The University of Tokyo Graduate School of brands and generics/biosimilars. He has submitted expert Medicine and Faculty of Medicine. He is an arbitrator in opinion for the large pharmaceutical company for AAA Japan and sits on various positions in Japanese medical/ Arbitration and testified at the deposition. His article was pharmaceutical societies. cited in petition for writ of certiorari his client submitted to the U.S. Supreme Court. He also has experience of IP Mr. ABE works in wide areas of international and corporate due diligence in the largest pharmaceutical M&A in Japan matters with a focus on intellectual property law and between big pharmaceuticals. FTO search is his daily international commerce. The patent litigations that he works. He has advised clients regarding standard essential has participated covers the fields of pharmaceuticals, patents. He also has experience of IP due diligence in chemistry, electronics and machinery, which the largest pharmaceutical M&A in Japan between big involve advanced technology such as biotechnology, pharmaceuticals. FTO search is his daily works. He semiconductors, etc., and which are cross-border matters. also has experience in trademark, copyright and unfair He has extensive experience on representing and advising competition litigation. multinational and domestic clients in pharmaceutical

INOUE, YOICHI PHARMA & BIOTECH DIRECTOR OF CHEMICAL DEPARTMENT IP LITIGATION

Asamura Patent Office,p.c. Tennoz Central Tower 22F (reception), 2-2-24 Higashi-Shinagawa, Shinagawa-ku, Tokyo 140-0002, Japan T: +81 3 5715 8651 E: [email protected] W: www.asamura.jp/en/

Yoichi Inoue is a Director of Chemical Department and an Prior to joining Asamura, Yoichi was involved in the experienced patent attorney who specializes in biology, research and development of new pesticides at a agricultural chemicals, medical treatment, and medicine. biological research laboratory. Fluent in English, he has He focuses his practice on domestic and international visited numerous patent firms in the US and Europe and patent prosecution and has extensive experience handling represented Asamura Patent Office at various IP summits. dispute-related matters, including litigation. He was also involved with the seminar on European patents sponsored by the Research Institute of Economy, Trade and Industry of Japan.

JUNE-JULY 2021 Asia IP 35 FEATURES

KUMAKURA, YOSHIO PARTNER PATENTS NAKAMURA and PARTNERS TRADEMARKS Shin-tokyo building 6F PHARMA & BIOTECH 3-3-1, Marunouchi, Chiyoda-ku, Tokyo 100-8355 T: +81-3-3211-1037 F: +81-3-3214-6367 E: [email protected] W: www.nakapat.gr.jp

Yoshio Kumakura (Mr.) is an attorney at law in the Legal scholarship program sponsored by the Legal Training Section as well as a patent attorney. His main areas of Institute of the Supreme Court. Most notably, however, is focus include intellectual property law, antimonopoly that Mr. Kumakura has won many IP litigations including law, unfair competition prevention law, litigation, four successful appeal cases before the Japanese arbitration, dispute resolution, and international Supreme Court. He has also written and lectured transaction law. Upon graduating from The University extensively on a number of topics such as Japanese IP of Tokyo Faculty of Law, he passed the Japanese Bar law, IP litigation, trademark issues and developments, Examination, but initially began his career in the financial and a host of specific case judgements made by the sector at Sumitomo Bank LTD. After his time there he Japanese high courts. He received the Award of Minister joined Nakamura & Partners. He later studied at Harvard of Economy and Industry on Intellectual Properties, the University receiving his LL.M. through an exchange AIPPI Member of Honour, and the APAA Enduring Award.

MIZUMOTO, YOSHITERU

DIRECTOR OF THE MECHANICAL AND ELECTRICAL DEPARTMENT PATENTS

Asamura Patent Office,p.c. Tennoz Central Tower 22F (reception), 2-2-24 Higashi-Shinagawa, Shinagawa-ku, Tokyo 140-0002, Japan T: +81 3 5715 8651 E: [email protected] W: www.asamura.jp/en/

Yoshiteru Mizumoto is a fully qualified patent attorney Key Areas of Expertise and Director of the Mechanical and Electrical Department, General machinery, Measuring devices, Coordinate with more than 15 years’ experience in the profession. measuring machines, Packaging containers, engines, His practice involves domestic and overseas patent actuators, machine tools, stents, hospital waste prosecution, Office actions, appeals and litigation. processing devices, fluid separation devices, degasifiers, radiation therapy equipment, implants, rackets, transfer In addition to patent prosecution, Yoshiteru advises on valves, cardboard, cultivation beds, packaging bands, etc. appraisals to determine whether products infringe patents and occasionally teams up with Asamura lawyers to Qualifications handle invalidation trials. Yoshiteru has been involved in FAA Airplane Single- and Multi-Engine Land revising examinations for patent applications serving as Single-engine aircraft takeoff a Chairman of the Second and Fifth Patent Committees.

36 Asia IP JUNE-JULY 2021 RYUKA, AKI MANAGING PARTNER

RYUKA IP Law Firm 1-6-1 Nishi-Shinjuku,Shinjuku L PATENTS Tower 22nd Floor,Shinjuku-ku, LICENSING & FRANCHISING Tokyo, 163-1522, JAPAN T: +81-3-5322-6375 E: [email protected] W: www.ryuka.com

Work Experience: clients and attends conferences in the US, Europe, and Asia. In 1987, Mr. Ryuka began his career as an electrical engineer Recent work in 2012 includes representing a large US client in the facsimile machines department of Canon Inc. Five in nullity trials before the Japan IP High Court and Supreme years later, he joined Tani & Abe Patent Attorneys in Tokyo, Court, together with colleagues Mr. Akashi and Mr. Takata Japan, where he prosecuted patent applications of foreign in cooperation with Nagashima Ohno & Tsunematsu, and and domestic applicants including Canon Inc. representing a large Korean client in infringement and nullity trials in cooperation with Anderson Mori & Tomotsune. From 1995 to 1998, Mr. Ryuka worked in the Washington, DC Membership office of US firm Cushman Darby & Cushman (now Pillsbury • Japan Patent Attorneys Association (JPAA) Winthrop Shaw Pittman LLP), where he mainly prosecuted • Japan Intellectual Property Association (JIPA) patent applications for Japanese clients. At the same time, he • Asian Patent Attorneys Association (APAA) established a patent firm in Japan and a translation company • International Association for the Protection of Intellectual in the US, the predecessors to RYUKA IP Law Firm, facilitating Property (AIPPI) business for Cushman Darby & Cushman. While in the US he • Licensing Executives Society, Japan (LES, Japan) passed the US patent bar exam. • Electrical Information and Communication Society (EICS) • Since founding RYUKA IP Law Firm, he has lectured • American Bar Association (ABA) extensively in Japan and abroad on IP topics, has published • American Intellectual Property Law Association (AIPLA): numerous articles including recently detailing RYUKA’s Japan Committee invention consulting services (Patent Visualization), and visits • International Trademark Association (INTA)

TANAKA, SHINICHIRO PARTNER PATENTS TRADEMARKS NAKAMURA and PARTNERS ENFORCEMENT Shin-tokyo building 6F IP LITIGATION 3-3-1, Marunouchi, Chiyoda-ku, Tokyo 100-8355 T: +81-3-3211-8741 F: + 81-3-3214-6367 E: [email protected] W: www.nakapat.gr.jp

Shinichiro Tanaka (Mr.) is a representative partner in related to international patent issues. He is an active our Legal Section. As an attorney at law and a patent member of the Daini Tokyo Bar Association, The Japan attorney, he has represented numerous clients often Federation of Bar Association, and Japan Patent Attorneys in the fields of intellectual property law, entertainment Association among others. Mr. Tanaka has given lectures media, antimonopoly law, unfair competition prevention on recent court decisions in Japan and their implications law, and international transaction law. He graduated from in practice, and also written articles on topics such as the Faculty of Law at Hitotsubashi University in Japan the international application of the theory of equivalency, and studied at the University of Munich where he gained patent litigation, and and trademark German and English language skills as well as knowledge infringement.

JUNE-JULY 2021 Asia IP 37 FEATURES

TSUJII, KOICHI PARTNER PATENTS NAKAMURA and PARTNERS TRADEMARKS Shin-tokyo building 6F ENFORCEMENT 3-3-1, Marunouchi, Chiyoda-ku, LICENSING & FRANCHISING Tokyo 100-8355 IP LITIGATION T: +81-3-3211-8741 F: + 81-3-3214-6367 E: [email protected] W: www.nakapat.gr.jp

Koichi Tsujii (Mr.) is a licensed patent attorney in Japan related organizations such as the All Japan Concert & and a licensed attorney at law in both Japan and the U.S. Live Entertainment Promoters Conference, Japan Anti- In the Legal Section his main practices include intellectual Doping Agency, and Japan Sports Arbitration Agency. Mr. property law, international transactions, and general Tsujii has gained recognition for writing numerous articles corporate law matters. He studied at Chuo University on topics such as parallel imports, licensing agreements, and the Legal Training Institute of the Supreme Court trademark issues, and the analysis of various specific in Japan and at Cornell University in America providing case judgements made in Japan. He has given lectures him with well-rounded knowledge of both domestic and for the International Trademark Association, the AIPPI international IP rights. He is a member of a number of World Congress, and the Tokyo University of Technology IP organizations as well as entertainment and sports among others.

YOSHIDA, KAZUHIKO PARTNER PATENTS NAKAMURA and PARTNERS TRADEMARKS Shin-tokyo building 6F LICENSING & FRANCHISING 3-3-1, Marunouchi, Chiyoda-ku, IP LITIGATION Tokyo 100-8355 T: +81-3-3211-8741 F: + 81-3-3214-6367 E: [email protected] W: www.nakapat.gr.jp

Kazuhiko Yoshida (Mr.), who goes by Kaz, is an attorney has lectured on computer laws as an adjunct lecturer for at law and patent attorney in the legal department and a The University of Tokyo School of Law. Mr. Yoshida has representative/managing partner of Nakamura & Partners. also written numerous articles in both Japanese and He handles many of our major client cases in matters English regarding specific court judgements and their related to intellectual property litigation, opinion and influence on current IP law and trending practices and negotiation, licensing, international transaction, sports and procedures in Japan covering a wide range of IP issues. entertainment, and antitrust. After graduating both The He is a member of various organizations such as AIPPI- University of Tokyo Faculty of Law and the Legal Training JAPAN, The Law Association for Asia and the Pacific, and and Research Institute in Japan, he joined the firm, and the Japan Association of Industrial Property Law. He was after gaining six years’ experience, he studied at Harvard an Assistant to the Reporter General of AIPPI International Law School obtaining his LL.M. degree and thereafter from 2010 to 2014 and has been the chief editor of the worked for Hughes Hubbard & Reed (New York) in the U.S. AIPPI Journal (both the Japanese and English versions) He has been a visiting professor at Tohoku University and published by AIPPI Japan.

38 Asia IP JUNE-JULY 2021 JUNE-JULY 2021 Asia IP 39 FEATURES

Japan’s IP Experts is based solely on independent editorial research conducted by Asia IP. As part of this project, we turned to thousands of in-house counsel in Japan, Asia and around the world, as well as Japan-focused partners at international law firms, and asked them to nominate private-practice lawyers including foreign legal consultants, advisers and counsel. The final list reflects the nominations received combined with the input of editorial team at Asia IP, which has more than 40 years of collective experience in researching and understanding Japan’s legal market. All private practice intellectual property lawyers in Japan were eligible for inclusion in the nominations process; there were no fees or any other requirements for inclusion in the process. The names of our 50 IP Experts are published here. Each IP Expert was given the opportunity to include their biography and contact details in print and on our website, for which a fee was charged. AIP

40 Asia IP JUNE-JULY 2021

FEATURES

MovingMoving images images A new wave of ADVERTISEMENT

As brand owners become increasingly creative with their use of moving images in their logos, lawyers around the region have devised a variety of ways to protect those moving images. Excel V. Dyquiangco reports.

he use of moving images in logos and brands revolutionizing the industry, attracting fresh clients these days has brought advertising to a whole and customers in the process. Aside from these new direction, especially in light of the pandemic. companies, some of the more popular trademarked TAlso known as a “motion trademark,” which is already moving images in the Asia-Pacific are an animated common especially for technology-based products logo sequence owned by Microsoft, Toyota’s jump such as mobile phones and computer programs, trademark (which dates to the 1980s) and the Sony a strong moving image is useful to strengthen the mobile logo, among others. product branding since it is visually remarkable. But with this newfound technology, are the region’s In fact, companies such as Apple and Coca- IP laws prepared to face a Herculean task in protecting Cola are slowly veering away from the stoic and the rights of moving images? And, at a perhaps more instead embracing a new platform that is gradually basic level, can you trademark a moving image?

42 Asia IP JUNE-JULY 2021 Well, it all depends on where you are. A moving clips and it shall also include a clear and concise image can be registered as a trademark in several description of the whole visual effect of the animation Asia-Pacific countries, including Japan, South Korea, from start to end.” Singapore, and , but is not recognized “Adopting the practices in developed countries in other countries, such as Indonesia and Nepal. could also help our country to bring such development “The Indonesian trademark law, which came and changes in the registration of non-traditional into effect since November 26, 2016, only provides trademarks,” he says. “Thus, regarding these non- protection for a sound mark, three-dimensional traditional trademarks, Nepal seems to be little behind trademark, hologram mark, , two- in practice.” dimensional mark or combination of two or more of those elements,” says Fortuna Alvariza, managing Creativity and innovation in a moving image partner at FAIP Advocates & IP Counsels in Jakarta. Although Indonesia has not had a specific law in “But in my opinion, protection of the moving image is protecting a moving image, Alvariza says that a a good step in solving the problem of the conventional moving image must be able to visually show obvious nature of the trademark which only protects words, distinctiveness. “Ideally, it must be unique as it is images, logos or a combination thereof. We can see used as the identity and characteristic of the brand that moving images are becoming an increasingly in endeavour to gain society’s knowledge,” she says. powerful aspect of digital marketing in this era. I “Given this, trademark owners must be extra creative hope that trademark law in the Asia-Pacific countries, and innovative to be able to create a moving image particularly in Indonesia, is evolving to recognize and which can fulfill the aforesaid expected function.” protect innovative approaches to trademark.” She adds: “Apart from that, I believe that the She adds, “As the moving image is still not examination process of a moving image trademark recognized under the Indonesian trademark law, application is more challenging compared to the other I suggest that SUBSCRIBER-ONLYit can be alternatively protected as a type of trademarks. A moving image trademark usually copyright under the Indonesian copyright law. The consists of animation, logo, words, characters, colours, moving image can be categorized as a visual audio music or sound, or combination of the said elements. under the copyright law.” Therefore, there are more aspects that must be While Nepal has had a PatentCONTENT Design and examined before a motion is approved to be protected.” Trademark Act since 1936 – probably the oldest IP act in Jyeshta Mahendran, a partner at Shearn Delamore the South Asian Association for Regional Cooperation & Co in Kuala Lumpur, agrees, saying that representing (SAARC) region, even though Nepal is still somewhat a depiction of a motion trademark can be seen as one known as a being in the beginning steps of IP protection of the practical challenges in the registration of motion – registration of movingThis images content as trademarks is reserved has not fortrademarks. our registered users come into existence yet. and/or subscribers“For instance, conventional trademarks are “As we know, laws are modified along with the typically affixed on the product packaging but with development of technologies which leads to the need motion trademarks, there is the practical difficulty of of regulation and protectionTo readto people the with latest regard issue, affixing register a motion for trademark free on the physical packaging to such developments,” saysby R.C. clicking Subedi, managing the ‘REGISTER’ of an immovable link product,”above she says. “On the other hand, partner at Apex Law Chamber in Kathmandu. “In my there may be less of a practical challenge in affixing case, no client has requested for registration of such motion trademarks on applied services. Uniformity moving images. I believe thatTo readone of allthe reasonsback issues,could in andthe requirement gain access for submission to of applications for be lack of innovation from the part of major brands as motion trademarks at the various intellectual property well as businesses. Nepal,exclusive being a beginnersubscriber-only in IP, has offices content, around subscribe the world is to also desirable to ensure always been behindAsia on technologies IP by clicking and innovation on the consistency‘SUBSCRIBE in the’ protectionlink above and enforcement of such in terms of brands and businesses. Nepal also lacks rights worldwide.” the infrastructure required to analyze and study the Aside from such practical challenges, satisfying distinctiveness of such non-conventional trademarks.” registrability requirements is also forthcoming when it He adds: “However, talking about whether or not comes to showing that the motion trademark fulfils the our country Nepal is equipped with IP laws to handle distinctive requirements under the Trademarks Act such a trademark registration, as per the definition 2019 in Malaysia. of trademark in our Patent, Design and Trademark “The examination of motion trademarks is only Act, 1965 ‘trademark’ means word, symbol or picture at its infancy stage in Malaysia due to the recent or a combination thereof to be used by any firm, recognition of non-traditional trademarks in the company or individual in its products or services Malaysian IP legislation,” says her colleague, Elisia to distinguish them with the product or services of Engku Kangon, an associate at Shearn Delamore & Co. others. So, this combination of pictures can be brought “At the time of writing, only two new motion trademarks into interpretation of moving image or motion image. have been filed [and are] pending examination since Also, seeing the practice in other countries like the the introduction of non-traditional trademarks. As United States and Canada, application for registration such, there is no clear guidance or precedents on of moving images shall include freezing the images/ the treatment and validity of motion trademarks in pictures in different frames or including animation Malaysia. Given the novelty of registering motion

JUNE-JULY 2021 Asia IP 43 FEATURES

trademarks in Malaysia, we would have to adopt a wait- innovatively connecting with the customers at the and-see approach as to how the Malaysian Registry same time.” will approach SUBSCRIBER-ONLYthe examination of motion trademarks. Subedi says that trademarking moving images, Such examination will follow the usual course of according to its scope, protects the creativity or examination as provisions for expedited examination goodwill one brand has put into for its marketing or of trademark applications (which is available under branding strategy. certain circumstances) is not availableCONTENT for applications “Trade marking of moving images has widened involving non-traditional trademarks including a the perspective of branding of the businesses,” he sequence of motion.” says. “It surely helps distinguish any brand from other brands in a new way. So, trademarking of such a moving Impacting consumers and businesses image is necessary to protect it from being infringed. While the pandemic Thishas forced content businesses is reserved to promote forTrademarking our registered moving images users will also help them in a their goods/services digitally as the traditionaland/or modes subscribers new style of advertising by consuming less screen time of promotion remain unavailable or hampered due to which may cost them less as well.” the challenging circumstances, this has unknowingly He adds: “In terms of consumers, trademarking given birth to moving images/motionTo read themarks. latest issue,moving register images forwill freehelp consumers distinguish a “A moving image or motionby markclicking has an theimmense ‘REGISTER’ brand in alink marketplace. above And this way, consumers are potential to become one of the most valued intellectual also engaged with fresh product branding.” property of a business,” says Mudit Kaushik, counsel “As mentioned, trademarks offer additional at ZeusIP Advocates in Delhi.To read “As a allmoving back image issues, or layers and of gain protection access and exclusivity,to which is a useful motion mark creates an instant association with the tool in a company’s intellectual property strategy,” source of the goods andexclusive services emancipating subscriber-only from a says content, Mahendran. subscribe “The inherent to nature of the human particular entity, securingAsia statutoryIP by clicking rights in the on same the ‘mindSUBSCRIBE and senses’ linkin differentiating above different forms will only assist an entity in commercially appropriating of sounds, smell and images is an added incentive in the same. It is not a hidden secret that a formal the development and protection of non-traditional registration of a trademark [including a moving image trademarks as an additional form of branding. or motion mark] adds great value while enforcing rights Consumers would naturally be drawn to moving against third-party infringers.” images as compared to still images which can be more He adds: “Moving images and motion marks are effective in distinguishing the goods and services of indeed considered as attention grabbers and there is one proprietor from that of another. To that end, it is nothing that businesses would like more than capturing also imperative to ensure that the expansion of non- the attention of the potential customers while keeping traditional trademarks beyond a word or logo will not the existing ones engaged. Adopting a moving image create an undue monopoly to a certain smell, colour, or motion mark by a business is considered a great motion or taste.” marketing strategy coupled with the advantage to Adds Kangon: “There is no denying that the distinguish its goods and services from the other backing of a strong trademark can easily transition the manufacturers and service providers in the trade. sale of that same product from a brick and mortar to an Accordingly, a moving image or motion mark acts as a online platform. Adding a motion image to a company’s fantastic source identifier, using which the businesses portfolio of trademarks would certainly be another get a chance to stand out from the competitors while means of standing out from a competitors.” AIP

44 Asia IP JUNE-JULY 2021 "Nepal, being a beginner in IP, has always been behind on technologies and innovation "There is no clear guidance in terms of brands and or precedents on the businesses. Nepal also treatment and validity lacks the infrastructure of motion trademarks in required to analyze and Malaysia. Given the novelty study the distinctiveness of registering motion of such non-conventional trademarks in trademarks." Malaysia, we would —R.C. SUBEDI, managing partner at have to adopt a wait- Apex Law Chamber in Kathmandu and-see approach as to how the Malaysian Registry "Conventional trademarks will approach the are typically affixed on examination the product packaging, of motion but with motion trademarks."SUBSCRIBER-ONLY trademarks, there is —ELISIA ENGKU the practical difficulty KANGON, associate, Shearn Delamore & Co, Kuala Lumpur of affixing a motion trademark on the CONTENT physical packaging of an immovable product. A moving image or On the other hand, motion markThis has content an is reserved for our registered usersthere may be less of immense potential and/or subscribers a practical challenge to become one of in affixing motion the most valued trademarks on intellectual To read the latest issue, register for free applied services." property of a by clicking the ‘REGISTER’ link above —JYESHTA MAHENDRAN, business. A partner, Shearn Delamore & Co, Kuala Lumpur moving imageTo read all back issues, and gain access to or motionexclusive subscriber-only content, subscribe to mark creates "We can see that moving an instantAsia IP by clicking on the ‘SUBSCRIBE’ link imagesabove are becoming association an increasingly powerful with the aspect of digital marketing source of the goods in this era. I hope that and services trademark law in the emancipating from Asia-Pacific countries is a particular entity. evolving to recognize and protect innovative —MUDIT KAUSHIK, counsel, ZeusIP Advocates, Delhi approaches to trademark.” —FORTUNA ALVARIZA, managing partner, FAIP Advocates & IP Counsels, Jakarta

JUNE-JULY 2021 Asia IP 45 FEATURES

Six of Dr. Seuss’s books for children, including And to Think That I Saw It on Mulberry Street and If I Ran the Zoo were pulled from future publication by his estate, over changing societal norms and the way Seuss had portrayed non-whites. Trademark, copyright and the racism of Dr. Seuss When the estate of Dr. Seuss pulled six of the author’s books for children due to changing societal norms, some fans were outraged. Excel V. Dyquiangco looks into the accompanying trademark and copyright issues.

n March 2021 – March 2, the 117th anniversary of reviewed our catalog of titles and made the decision Theodor Seuss Geisel’s birth – the estate of Dr. last year to cease publication and licensing of [several Seuss recalled and stopped publication of some titles published between 1937 and 1976]. These books Iof his most controversial work, including And to Think portray people in ways that are hurtful and wrong. That I Saw It on Mulberry Street (which the estate pulled Ceasing sales of these books is only part of our for its outdated portrayals of Asian people) and If I Ran commitment and our broader plan to ensure Dr. the Zoo (which poses similar problems with depictions Seuss Enterprises’ catalog represents and supports of Asians, Africans and Arabs). all communities and families.” “Today, on Dr. Seuss’s birthday, Dr. Seuss The Japanese American National Museum in Los Enterprises celebrates reading and also our mission Angeles issued a statement in support of the decision: of supporting all children and families with messages “The Japanese American National Museum (JANM) of hope, inspiration, inclusion, and friendship,” the welcomes the decision by the publisher of Dr. Seuss’ organization said in a statement. “We are committed books to end publication of six of the author’s children’s to action. To that end, Dr. Seuss Enterprises, working titles that depict harmful caricatures of people of color, with a panel of experts, including educators, including Asian Americans and Blacks.

46 Asia IP JUNE-JULY 2021 “One example is the stereotypical image in And to “Culture and what is morally acceptable can Think That I Saw It on Mulberry Street, of an Asian man change over time,” she says. “The applicable law with slanted lines as eyes, wearing a conical hat, and therefore cannot follow the whimsical changes of carrying a bowl with chopsticks.” culture which are essentially public opinion that can “The mainstreaming of racism and prejudice is differ from country to country. The legal framework deeply embedded in our culture. It is high time that Dr. needs to be consistent so as to provide certainty to Seuss’ work is examined,” Ann Burroughs, president those relying on it to protect their rights in the long and CEO of JANM, said in the statement. “The klieg light run.” of history could not have provided more compelling According to Michael Williams, a partner and evidence.” head of the IP group at Gilbert + Tobin in Sydney, it is Several months down the road, the questions on hard to dispute that the books come from a different culture and morality continue. What happens to a work era. that was deemed non-obscene when it was published “While not everything old can be acceptable now, but is now considered obscene, considering that there is no bright line,” he says. “Copyright is a creation culture and the times have changed? of a culture of giving creators a livelihood, rather “If that happens to a trademarked item, in than relying on patronage, by allowing them to retain simple terms, nothing happens,” says Bienvenido A. control. That brings with it the right not to publish for Marquez III, a partner at Quisumbing Torres, the Baker many types of works, even if their reasons for doing so McKenzie affiliate in Manila. “The determination of the are unpopular. It is ironic that the decision to withdraw propriety of a trademark (i.e., whether it is obscene the tests, which is only possible by exercising copyright, or not) is made only at the time of the application. is the more popular decision. Of course, copyright There is no ‘regular review’ conducted by the Bureau does not provide control over copies that are already in of TrademarksSUBSCRIBER-ONLY (BoT) for existing, valid and maintained libraries – so you are safe to find a copy there.” trademarks to check whether they still pass the current He then poses a question: Is this standard really measure of what is ‘obscene’ or not.” good enough in a digital age, when libraries have He adds: “Technically, we believe that the BoT instituted restrictions on access to materials due to can invalidate the mark upon renewalCONTENT (every 10 years Covid-19? for marks under the current IP Code, every 20 for “We increasingly rely on digital copies and this marks under the Trademark Law) on the ground that is where the power of copyright to ensure no further it has become obscene, but to our knowledge, this has dissemination is problematic,” he says. “There is an not been done. The BoT can institutionalize or issue argument that if paper copies of the works are still specific regulationsThis on what content should beis donereserved for these for available our registered in libraries that users digital copies should still be types of marks. and/or subscribersoffered for loan.” His colleague, Frederick I. Jose, a senior associate For Subhash Bhutoria, partner-designate at L&L at Quisumbing Torres, adds that trademark protection Partners in New Delhi and founder of the Art Law should definitely be subjectTo read to decency, the latest ethics issue,and India register blog, copyright for free protects personal creativity, morals. by clicking the ‘REGISTER’independent link of above cultural changes. “Therefore, while “In many ways, trademark protection or copyright laws would continue to protect the work registration validates and legitimizes a mark or which has not come into the public domain, it may not business,” he says. “ProprietorsTo read alllooking back to issues, have compel and gain the use access and exploitation to of such protection, business deals with each other would necessarily which is against social or public order in the present check whether eachexclusive others’ brands subscriber-only are registered. times,” content, he says. subscribe to The registration thenAsia operates IP by as clickinga stamp of approvalon the ‘SUBSCRIBE’ link above for these businesses. The IPO also has a higher role in Copyright and moral issues society. It does not only protect the business owners, it “Traditionally, copyright has taken an agnostic position also protects the public.” on the precise content of a work, so long as it meets the minimum criteria for protection,” says Williams. Not of copyright? “There is no morality criterion under most copyright Esther Wee, head of IP at Harry Elias Partnership in laws and copyright has been asserted over what in the Singapore, says that when it comes to copyright, the past was regarded as immoral. In the few cases where issue of culture and copyright are two separate issues. a morality objection has been taken, it has usually been They are not interrelated and should not be made so. unsuccessful. A case we ran in the Federal Court of “The copyright regime provides a framework of Australia in 2005-2006 and successfully defended the control for the copyright owner and its estate (after the decision on appeal, an obscenity objection to video owner has passed on),” she says. “The owner should content – raised by alleged infringers – was rejected have the choice of whether to allow republication or unanimously by the court.” reproduction of its work, especially when such an act He adds that copyright usually leaves issues would have an effect on the reputation of its creator.” such as morality and decency to other forms of legal She adds that culture reflects the common regulation. meanings of a society. “Freedom of expression may have a role in

JUNE-JULY 2021 Asia IP 47 FEATURES

moderating the rights under copyright but not others, creative expression, which may or may not stand the such as Australia,” he says. “And it is very difficult to test of reasonable restrictions, to freedom of speech know how such a defence to copyright infringement and expression. The issues relating to morality, decency would work in practice.” or public order are treated as criminal offences, and Bhutoria adds: “It is the Constitution (at least in copyright law does not have much relevance except for the Indian context) which balances the expression with the purpose of ownership.” AIP reasonable restriction. The copyright act promotes

"In many ways, trademark protection or registration validates and legitimizes a mark or business. The registration then operates as a stamp of approval for these businesses. The IPO has a higher role in "There is no ‘regular society. It does not only review’ conducted protect the business by the Bureau of owners, it also protects Trademarks for the public." existing, valid —FREDERICK I. JOSE, senior associate, and maintained QuisumbingSUBSCRIBER-ONLY Torres, Manila trademarks to check whether they still pass the current "Culture and what is measure of what is morally acceptable can CONTENT ‘obscene’ or not." change over time. The —BIENVENIDO A. applicable law cannot MARQUEZ III, partner, follow the whimsicalThis content is reserved for our registered usersQuisumbing Torres, Manila changes of culture, and/or subscribers which are essentially "While copyright laws public opinion. The would continue to protect legal framework To read the latest issue, register forthe free work which has not needs to be by clicking the ‘REGISTER’ link abovecome into the public consistent so domain, it may not compel as to provide To read all back issues, and gain accessthe touse and exploitation certainty to exclusive subscriber-only content, subscribeof such to protection, which those relying is against social or public on it to protect Asia IP by clicking on the ‘SUBSCRIBE’order link above in the present times." their rights. —SUBHASH BHUTORIA, partner- —ESTHER WEE, head designate, L&L Partners, and founder, Art Law of IP, Harry Elias Partnership, India, New Delhi Singapore "Copyright is a creation of a culture of giving creators a livelihood, rather than relying on patronage, by allowing them to retain control. That brings with it the right not to publish for many types of works, even if their reasons for doing so are unpopular.' —MICHAEL WILLIAMS, partner and head of IP, Gilbert + Tobin, Sydney

48 Asia IP JUNE-JULY 2021 CORRESPONDENTS

In 2010, applicants had indication of the same was seen filed for a patent application for at a press conference following the Favipiravir tablet via PCT the rejection of the application, and designated 24 jurisdictions, wherein Vuttikrai Leewiraphan, ASEAN including Japan, the United the DIP’s director-general stated: Favipiravir: Patent States, India and Thailand, and “All sectors are playing their rejection in Thailand with the European Patent Office. part in coping with the spread of Favipiravir (or T-705; 6-fluoro-3- With the exception of India, all Covid-19, with the common goal to hydroxy-2-pyrazinecarboxamide) corresponding applications in provide people with quick access to is a broad-spectrum antiviral drug other designated countries have necessary drugs.” used in the treatment of multiple been granted. The applications With the outbreak of diseases, and is the first drug in Europe and Japan were Covid-19, the demand for approved by countries around the considered inventive and Favipiravir has risen significantly world as an emergency option were granted in 2013 and 2014 and there are now concerns for Covid-19 cases. Thailand’s respectively. In India, Sun Pharma that there may be a shortage of Department of Intellectual have already launched a generic Favipiravir tablets in Thailand. Property (DIP) has since rejected a version of Favipiravir under the The Government Pharmaceutical Thai patent application filed under name FluGuard.The application Organization (GPO), the state the compulsory license system for in Thailand, despite having cited enterprise which manufactures a specific formulation Favipiravir the same prior art documents as pharmaceutical products in in tablet form. those cited in Japan and Europe, Thailand, intends to set up a The patent for the original was not deemed inventive. manufacturing centre for the compound of Favipiravir was The DIP had rejected Favipiravir tablets to meet these filed in 1998 by a Japanese the patent application for the growing demands. Previously, pharmaceutical company, Favipravir tablet on the ground this was not possible due to the Toyama Chemical Co. The first that the invention lacks any pending patent application for patent application for Favipiravir inventive steps. However, given the Favipiravir tablets. However, now (WO2000/10569 A1) was filed acceptance of the corresponding that the said patent application in 2000 through the Patent patent application in other in Thailand has been rejected, Cooperation Treaty (PCT) and jurisdictions based on the same Thailand is now proceeding to was designated in 27 countries, prior art, it is suspected that the produce the drug for domestic which did not include Thailand. patent could have been rejected use unencumbered by the Based on this original application, for reasons other than not having patent application. The GPO is the patent protection of the any inventive steps, i.e. to ensure now working to establish the original compound had already the supply of the same for Covid-19 manufacture of Favipiravir tablets expired in 2020. patients in Thailand. Early at the industrial level.

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Compulsory licensing confidential information. Despite has previously been adopted in the limitations of NDAs, other Thailand before in other contexts; legal documents and agreements for instance, in order to pave the INDIA must be utilized in conjunction way for cheaper AIDS drugs. It Can you protect your with the NDA to prevent leakage is suggested that approving the IP with an NDA? of information. Since NDA is drug for compulsory licensing We are living in an era where legally binding, any party violating would have been much better technology is changing at a the terms and conditions signed to maintain the integrity of the lightning speed. In our quest to under NDA would be legally liable patent system. Such an approach always want better to reshape to compensate the damages to the would have served as a sensible the world, innovation is playing aggrieved party. approach that served the interests a major role. People associated Depending on the nature of of both the public and the patent with organizations, research the parties, including low-riskers system at large. Alternatively, labs, universities, and start-ups such as investors and high- the Thai DPI could have granted are always working on ideas riskers such as competitors and a waiver on the patent rights of to bring something new and start-ups, the type of NDA which FTC, as was requested by the better. Novel ideas form a part of should be used varies. Accordingly, World Health Organization in the intellectual property of any NDAs can be unilateral, bilateral, relation to the patent rights of organization, and such ideas are confidentiality deed or multi-party. Covid-19 vaccines. AIP assets for the revenue and growth Investors have the least interest in of the organization. This is why stealing confidential information it becomes important to protect as they are only interested in the assets and a non-disclosure investing their money in the ABOUT THE AUTHORS agreement (NDA) comes into technology. On the contrary, start- being. ups are at high risk if they share Denise Mirandah is a director at mirandah An NDA, or a “confidentiality confidential information, which asia, which has agreement,” is a legal agreement are novel ideas of the invention. offices in Singapore, that ensures the confidentiality of An early stage of development of Malaysia, Vietnam, Thailand, Indonesia proprietary information. It further a new product or service is always and the Philippines. She protects the information from at high risk of getting copied or has played an important Denise Mirandah getting leaked in the public domain stolen by competitors. It thus role in the international promotion of mirandah and defines boundaries. Under becomes extremely important asia, helping to share Section 27 of the Indian Contract for the high-riskers to put their its family values and its Act, 1872: “Agreement in restraint NDA in place before even starting successful one-stop-shop approach to IP. of trade, void – Every agreement a discussion. Also, any future by which anyone is restrained from merger and acquisitions, licensing Puwin Keera oversees the workflow of non- exercising a lawful profession, trade or sales would require a strong contentious Thailand or business of any kind, is to that NDA to prevent jeopardizing the patent matters extent void.” at mirandah asia, confidentiality. Apart from the risk ensuring that all clients The big question is: “Is my evaluators, even the on-boarding seeking protection idea protected under an NDA?” process of new employees requires in Thailand are given Puwin Keera the full spectrum of The answer is “NO.” to have an NDA established patent services leading up to grant, with As per IP laws, an idea is only between the company and the an optimum level of local expertise to subject to legal protection if it has employee. ensure efficient translation service and communication with the Thai Department of been expressed in tangible forms It is also important to note it Intellectual Property (DIP). As a liaison for such as on a piece of paper, a CD, is never ideal to use a pre-defined the Thailand office, Keera works to build a a book or a song, or any other template as a non-disclosure strong network of understanding between the Thailand, Singapore and Malaysia offices. physical form. In other words, a agreement. Businesses enter This coincides with his mission to continually concept that is a mere figment into NDAs before discussing new improve the quality of work in the Thailand of one’s imagination cannot be inventions with potential investors. office; he also provides consultations for advertising and media firms. protected. Say you have an idea The requirements, including about a coffee machine in your clauses, time duration and specific mind. That mere idea of a coffee information that is included and/ mirandah asia (singapore) pte ltd machine cannot be protected by or exempted, et. al, all need to be 1 Coleman Street the NDA. The NDA will come into taken into consideration while #07-08 The Adelphi play after you put that idea in a Singapore 179803 putting together the NDA. For T: +65 6336 9696 noticeable, real and physical form. instance, there is no defined time F: +65 6338 3739 Nevertheless, having an NDA limit given on the duration of the E: [email protected] W: mirandah.com in place does not guarantee full non-disclosure agreement. It may protection against the misuse of extend for five years, for example, or it may be a non-terminating

50 Asia IP JUNE-JULY 2021 INDIA Is India “foreign decree enforceable friendly”? Legally speaking, enforcement of every decree, whether Indian or foreign, is subjected to the provisions of the Code of Civil Procedure, 1908 (CPC). In 1937, a specific provision under Section 44A was added to the CPC to permit the enforcement of a decree (excluding an arbitration award) for payable of monies (excluding taxes and penalties) within the territory of “British ruled India”; it was limited to the enforcement of a decree passed by the Superior Courts in the United Kingdom and other reciprocating territories. ABOUT THE AUTHORS After independence, these provisions were made applicable Archana Shanker is to India where twin parameters a senior partner and head of Anand and are satisfied: the first beingthat Anand’s patents and the said decree is a conclusive one designs practice. She and the second being that it has has been recognized as an institution in been passed on merits of the case herself when it comes adjudicated upon between the to complex patent same parties or between parties prosecution and is Archana Shanker credited with shaping under whom they or any of them NDA to protect the trade secrets the patent jurisprudence of India. Shanker claim litigating under the same advises the government on IP matters permanently. with same assiduity with which she has title by a superior court having It is noteworthy to mention been working on progressive development competent jurisdiction. that once the “confidential of patent jurisprudence of the country. A “decree” means formal Behind her is 29 years of dedicated practice information” covered under the in prosecution, litigation and opposition adjudication of the matter NDA is public, the NDA becomes across industries from pharmaceuticals where the court conclusively ineffective. An NDA cannot protect to life sciences, software, ICT, telecom, determines the rights of the mechanical, electronics and biodiversity. She something already present in the is a leading patent attorney for IP strategy, parties regarding all or any of the public domain and accessible to patents and designs prosecution and issues in controversy in the suit. all. Hence, tailoring the clauses contentious. A “foreign judgment” is defined as to make your NDA enforceable Priya Singh handles patent prosecution and the judgment of a foreign court. and strong is always a priority contentious matters in the Information and A foreign court under Section and can be done with the help of Communications Technology (ICT) domain. 2(5) of the CPC means a court She has 11 years of extensive experience professional attorneys. in patentability and (in)validity searches, situated outside India and which As is said, “prevention Infringement analysis, FTO searches, is not established or continued is better than cure,” and it is technology landscape, patent-to-standard by the authority of the Central mapping and 3GPP standard analysis, expert always beneficial to first bring patent assessment, evidence-of-use claim Government. Sections 13 of the into being the NDA, as they have charts and portfolio analysis. She is currently CPC contains the parameters to with a senior associate in the firm’s patents game-changing power. Take and designs practice. be ascertain the conclusiveness of a word of caution: To prevent any foreign judgment or decree. forfeiting your IP rights, have According to section 13 a foreign the parties sign the NDA. With judgment shall not be conclusive the impressive technological Anand and Anand unless: breakthroughs, unmatched quality First Channel Building, Plot No. 17A “A foreign judgment shall be Sector 16A, Film City of information and ideas exchange, Noida, Uttar Pradesh 201301 India conclusive as to any matter thereby and innovation happening, this T: +91 120-4059300 directly adjudicated upon between document is going to be a major F: +91 120-4243056 the same parties or between parties E: [email protected] player in protecting your IP rights W: anandandanand.com under whom they or any of them and cannot be ignored. AIP claim litigating under the same title

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except- of competent jurisdiction. In of the CPC that the foreign decree (a) where it has not been pronounced Marine Geotechnics LLC v. Coastal should be relating to the same by a Court of competent Marine Construction & Engineering matter. jurisdiction; Ltd. 2014, the Bombay High court (b) where it has not been given on relied on the ruling of the Supreme Conclusion the merits of the case; Court’s decision in International It is understood that foreign (c) where it appears on the face of Woolen Mills v. Standard Wool judgment or decree has only the proceedings to be founded (UK) Ltd , and held that a decree, evidentiary and persuasive value on an incorrect view of whether from a reciprocating or in the eyes of the law. It can be international law or a refusal a non-reciprocating territory, gathered from above that even to recognise the law of India that follows a judgment that is not if a decree is passed by a foreign in cases in which such law is on merits cannot be enforced in court, the said decree may not be applicable; Indian courts. The Bombay High enforceable against a defendant (d) where the proceedings in which Court ruling clarified law regarding due to the operation of Section 13 the judgment was obtained are execution of a foreign decree the of the CPC. Section 13 read with opposed to natural justice; court and ruled that a foreign Section 44A of the CPC clearly sets (e) where it has been obtained by decree, whether of a reciprocating out the conditions and boundaries fraud; or non-reciprocating territory, within which the Indian court can (f) where it sustains a claim founded that is not on merits, or does not operate to allow enforceability of on a breach of any law in force in otherwise satisfy the requirements a foreign decree in appropriate India.” of Section 13 of the CPC, cannot be cases. The calculated and cautious enforced in Indian courts. approach of the Indian courts in If any foreign judgment or Similarly, when a court enforcement of foreign courts decree fails any of the above- from China directed a company decree is noteworthy. If we see mentioned conditions it will not to withdraw from proceedings in a catena of decisions in various qualified to be considered as India, the Delhi High Court acted courts in India, we will find that conclusive and hence, may not be to preserve the interests of the India for sure is foreign decree- enforceable by courts in India. company in Indian courts. enforceable friendly. However, Where a foreign judgment or In Interdigital Technology for making an application for decree is found to be conclusive Corporation & Ors v. Xiaomi enforcing the foreign judgment or under Section 13 of the CPC, it Corporation & Ors, CS(COMM) decree in India, an expert opinion can be enforced in India in by 295/2020, the Delhi High Court would be useful in obtaining filing an execution petition under passed a judgment on May 3, favourable results. AIP Section 44A of the CPC (if the 2021, to restrain Xiaomi from decree is passed by a court of the pursuing or enforcing the anti- ABOUT THE AUTHOR reciprocating territory) or by filing suit injunction order dated D.P.S Parmar heads the a suit upon the foreign judgment/ September 23, 2020, from the Intellectual Property Appellate decree (if the decree is from a court Wuhan Intermediate People’s Board (IPAB) practice group at LexOrbis. After joining the IPAB of a non-reciprocating territory). Court. The anti-suit injunction as Technical Member India has reciprocating agreements directed Interdigital to withdraw (Patents) in 2011, he with the reciprocating territories or suspend patent infringement has been instrumental D.P.S Parmar in writing some path notified under under Section 44A: proceedings in the Delhi High breaking and insightful the United Kingdom, Bangladesh, Court, failing which interdigital decisions on Indian patent law issues. Hong Kong, Singapore, Malaysia, would be liable to pay a fine of These include establishing legal positions on excluded subject matter under Sections , Trinidad & Tobago, Rmb1 million (approximately Rs11 3(d), 3(i) and 3(k), divisional applications, Fiji, Papua New Guinea, the Cook million, or US$154,000) per day for disclosure requirements under Section 8, Islands (including Niue) and the violating the Wuhan Order.] working statements and compulsory license, to name a few. Before joining the IPAB, Trust Territories of Western In this case, again the issue Parmar worked with the Indian Patent Office Samoa, the United Arab Emirates of enforcement of a foreign decree for more than 27 years and played a vital role and Aden, Yemen. was raised, and the Delhi High both at the administrative and policy levels. He also served as the head of the Intellectual It is not that a foreign Court refused to execute the Property Training Institute in Nagpur, which decree of a foreign court in a Wuhan order inter alia for the was responsible for providing training to new non-reciprocating territory is not simple reason that the Wuhan examiners at the IPO. enforceable in India, but for that order was passed in a global royalty purpose, the applicant must file determination suit, whereas in the a suit for the purpose before the Delhi High Court, application for LexOrbis 709/710 Tolstoy House Indian courts. That means a fresh execution of the Wuhan order was 15-17 Tolstoy Marg civil suit needs to be filed based filed in pending infringement suits New Delhi 110001 India T: +91 11 2371 6565 on that foreign decree, or on the filed by Interdigital. This case again F: +91 11 2371 6556 original underlying cause of action, reiterated the principle laid out by E: [email protected] or both in a domestic Indian court Section 13 read with Section 44A W: lexorbis.com

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