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Intellectual Property in the Age of Internet – Online Risks and Opportunities during the COVID-19 Crisis

Dr. Marta Bettinazzi IP Business Advisor South-East Asia IPR SME Helpdesk

21 April 2019 Welcome to the Webinar

Moderator:

Nora Bihari Project Manager South-East Asia IPR SME Helpdesk

Carlo Liay Dr. George Tzogopoulos Dr. Marta Bettinazzi

Business Relations Manager Senior Research Fellow IP Business Advisor

ICCPI – Italian Chamber of CIFE – Centre International de South-East Asia IPR SME Helpdesk Commerce in the Philippines Formation Européenne Webinar Interaction Tool

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TIME AGENDA SPEAKER(s)

Introduction to the SEA IPR SME Helpdesk and its Core 10:00 – 10:05 Nora Bihari, SEA IPR SME Helpdesk Service

Introduction to the Italian Chamber of Commerce in the 10:05 – 10:10 Carlo Liay, ICCPI Philippines (ICCPI)

Dr. George Tzogopoulos, Centre 10:10 – 10:30 The Internet in the Coronavirus Era International De Formation Europeenne

10:30 – 10:50 Protecting your intellectual property in the age of internet Dr. Marta Bettinazzi, SEA IPR SME Helpdesk

10:50 – 10:55 Q&A session All speakers

11:00 Closing Nora Bihari, SEA IPR SME Helpdesk

An initiative of the © European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Core Services – What we offer Enquiry Helpline Training Workshops Website & Blog Newsletter, E-Bulletin

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For more information visit https://www.iccpi.org.ph/ E-mail: [email protected] The Internet in the Coronavirus Era

Dr. George Tzogopoulos

Senior Research Fellow

CIFE – Centre International de Formation Européenne Protecting your IP in the Age of Internet

Dr. Marta Bettinazzi

IP Business Advisor

South-East Asia IPR SME Helpdesk Before we start I have a question for you Who registered Instagram domain name in the Philippines? and

The Respondent is an individual resident in the Republic of Korea.

• She has at different times registered other domain names that combine third party trademarks with the country code Top-Level Domain ("ccTLD") suffix ".ph", in some cases with the Second Level Domain ".com" or the element "com". These other domain names include , , , , and . • She registered the domain name on October 19, 2014 and the disputed domain name on March 8, 2016.

The Instagram LLC was about to send a cease-and-desist letter

• Ms Jiwon Song, offered to sell the domain names • The parties reached and agreement

However, the disputed domain names were not subsequently transferred to Instagram • The Company had to file a Complaint with the WIPO Arbitration and Mediation Center (the "Center“). • 2 months later the Panel assigned the domain names back to Instagram

granted by national law IP is born applies within national national borders to the national companies

worldwide marketing transfer of technology Trade and internet are worldwide web means international worldwide risks

Trade marks: Distinctive sign that allows consumers to distinguish goods or services

Patent: Invention or Utility solution (novel –inventive step- industrial application)

Industrial design: appearance of a product (new – creative – industrial application)

Geographical indication: name or a sign that connect to a specific place

Trade secret: information which has not been disclosed and is applicable in business

Trade marks: Trade secret: • Logos • Know-how • Branding • Receipt • Start up tune • Sent/colors

Industrial Patent: Design: • Improved processes • Shape of the product • Inventions • Shape and • Operating system arrangement of the • Operation of User buttons/ the screen interface • User interface Copyright: •Pictures •Decorations •Software •User Manual

What is an international trade mark?

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European © European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. An international trade mark DOES NOT exists What exists is the Madrid system •An international treaty that helps you registering and managing trademarks worldwide. •File a single application and pay one set of fees to apply for protection in up to 122 countries. •However you still have to choose which countries to cover Otherwise •The trade mark is strictly national and need to be registered in every country •This also applies to other kinds of IP

• Registration takes around 15 days Copyright • Costs of basic application approx. 12/15 €

• Registration takes around 4 y. Invention Patent • Costs of basic application approx. 200 € Utility Solution • Registration takes around 8 m. Patent • Costs of basic application approx. 122 € • Registration takes around 6 m. Industrial design • Costs of basic application approx. 122 € • Registration takes around 6 m. Trade marks • Costs of basic application approx. 104 €

Infringement by third parties

• Trade Marks squatting • Online infringements • Counterfeits

Infringement by potential partners

• Backdoor sales • Bad faith registration • Stealing of know-how

An initiative of the © European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. How to take advantage of the Internet while protecting your IP Try to understand what are • Do you haven any invention to patent? • Do you have any brand name product name to register as Trade your Intellectual property mark? rights: • Do you have any copyrightable product (software, music texts )?

You probably already have a website to present your products, • Are you willing to build your own E-shop your company values and get • Or you will sell your product on big players platforms? attention but…

You will have to closely monitor the big players platforms to block • Do not forget that your website and everything is uploaded on it Trade mark infringements and is protected under copyright. counter faiths

If you are not going to design the website yourself write clear licensing contracts!

• Ask yourself: who owns the copyright? • Make sure that neither you or the web-designers are using copyright protected materials.

When you put something on internet it can be copied every where, so BEFORE lunching your website: • Register your trade mark in every jurisdiction you want to enter • Register your copyright on the text and pictures • Patent every invention your are showing on the website • Register the design of the User interface (as long as it is original and new) before lunching the website.

When you are ready is time for: Registering your domain name

“DotPH“ authorizes and/or licenses Always good to A domain name is a other private It is possible to have also the way to identify you corporations protect your national extension so it’s better to /entities to offer domain name as a (.ph) to avoid avoid long and domain name Trade mark confusion…or fraud complex name registration (cybersquatting) services to the public You can opt for "generic top level domains" such as PH Domain .com, .net, .org and Foundation (Dot. It is better to use .info. Or you can PH) is in-charge of your trade mark as choose from the the management of domain name specialised and domain name restricted top level registration domains based on the sector.

In the Philippines this kind of dispute are ruled based on the .PH Uniform Domain Name Dispute Resolution Policy and the Rules for .PH Uniform Dispute Resolution Implementation Rules

Disputes over the registration and use of “.ph" domain names shall be settled through: Mandatory Administrative Proceeding in front of World Intellectual Property Organization [WIPO] or Hong Kong International Arbitration Center [HKIAC]

A mandatory administrative proceeding is due when the "complainant" asserts that •The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; •The respondent have no rights or legitimate interests in respect of the domain name; and •The domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

Complainant is a Luxemburgish company that operates a popular “car classifieds” website and owns the Carmudi Mark (the “CARMUDI Mark") •They have apply trough the Madrid system for TM in the Philippines, the TM was registered the November 27, 2014. •The Disputed Domain Name was registered by Respondent on October 28, 2013. •The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2015. The domain name is clearly identical to the registered trade mark and the respondent has not come forward with any claim to rights or legitimate interests.

However, it is also necessary to prove that the domain name has been registered and used in Bad Faith

•The Complainant argues that the Respondent acted in bad faith simply by registering a name protected by Philippine trademark law •The Complainant did not obtain trademark registration in the Philippines until November 27, 2014; more than a year after the Respondent registered or acquired the Domain Name on October 28, 2013. However The Complainant registered the domain name on September 13, 2013, and then registered the domain name on September 15, 2013 •The Complainant’s mark is a distinctive, coined name. According to the Complainant’s International Registrations of the CARMUDI mark, the word comprising the mark “has no meaning”. The Panel notes that it does not appear in English or Filipino dictionaries. •Thee Panel ordered that the Domain Name be transferred to the Complainant.

The Panel concludes that the third element of the Policy is established, in view of all the circumstances in this proceeding.

A coined Trade Mark is easiest to defend. Panels may draw inferences about “Given the distinctive, coined mark and whether the domain name was used in the timing of the Domain Name bad faith given the circumstances registration, it is hard to conceive how surrounding registration, and vice versa the Domain Name could be meant for any legitimate use”.

“Passive holding” can represent bad faith use of a domain name, especially in circumstances where “it is not possible to conceive of any plausible actual or contemplated active use of the domain WIPO Panels at the end of the procedure name by the Respondent that would not can directly assign the Domain Name to be illegitimate, such as by being a the legitimate owner passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law” .

You should monitor the most important e-commerce websites

Search for your products in local Search for your brand combined with key Search for your brand name language words as “like” , “replica” or “inspired”

Don’t forget to search on Facebook

In recent years big websites like the Alibaba groups adopted People start selling in Facebook and private groups a stricter policy

There is no specific legislation for online infringements

Selling counterfeit is always However is hard to catch online Most big players have a notice and take illegal infringers down system

ALIBABA intellectual property rights protection (2018) shows the results of an intense use of technology for monitoring IP infringements • Analysis of Emotions and Semantics • Full View of Merchants • Live Broadcasting Controls • Through the use of real-time scanning technology, 96% of the listings proactively removed by Alibaba in 2018 were eliminated before a single sale took place

It shows an increased pressure on the E-commerce platforms to ensure an effective IP protection

• Alibaba is reacting in a quite proactive way, using AI device of new generation

Does this mean that you will not find counter faith goods on Alibaba platforms?

• No!

© European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Monitoring a case study

An Italian company is producing glues which have never been sold in Vietnam • In September they receive information that someone is trying to register their TM in Vietnam • The Vietnamese company was also selling on Facebook • The Italian Company thought they could not oppose the registration, but they contacted the helpdesk

Suggested strategy • Try to contact the vendor, also to understand how he got the products • Oppose the registration, is a clear bad faith (the logos where identical) • Ask Facebook to remove the product

The Vietnamese company • “Agreed to withdraw the application for TM and modify the label, under a condition that someone needs to cover the small cost that they have paid so far for the brand registration process”

Lesson learnt • Monitoring your IP is crucial for early intervention, the case would have ended quite different if the TM was already registered • Monitor also online selling, Facebook is a common place to find counterfeit goods

© European Union, 2020. Reuse is authorised provided the source is acknowledged. The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39. Do not forget Intellectual property is an asset •A well made internet presence can attract consumer and investors •There are many effective ways to protect your IP online •Be proactive, monitor your IP! •Registration is always less expensive than litigation Intellectual property is MONEY

An initiative of the © European Union, 2019. Reuse is authorised provided the source is acknowledged. The reuse policy of European © European Union, 2020. Reuse is authorised©Commission Europeanprovided Union,documents 2019.the source is Reuseregulated is isacknowledged. authorised by Decisionprovided The2011/833/EU reuse the policysource OJ ofL is 330,European acknowledged. 14.12.2011, The p.39. reuse policy of European Commission documents is regulatedCommission by Decision documents2011/833/EU is regulatedOJ L 330, by14.12.2011, Decision 2011/833/EU p.39. OJ L 330, 14.12.2011, p.39. Thank you for your attention! Stay connected!

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