The final weeks of 2018 are the culmination of a year that has showcased the breadth and depth of INTA’s work across the Asia-Pacific region. Representatives of the Association organized, participated, or joined dozens of events reaching hundreds of important government and industry partners from across the region.
Belt and Road Initiative Offers Means for Engagement
As part of INTA’s efforts to highlight the need for trademark protection and strong anticounterfeiting measures connected with China’s Belt and Road Initiative
(BRI), and to promote an Intellectual Property Rights (IPR) Center of Excellence, the Association participated in the Business of IP Conference December 6 in Hong Kong at the invitation of the Hong Kong Trade Development Council and organized a panel session on cross-border brand protection.
Alan Liu, Director, Global Brand Protection, Asia-Pacific, Johnson and Johnson Supply Chain; Thierry Dubois, Director, Federation of the Swiss Watch Industry (FH); and Sam Zhou, Brand Protection Leader at Procter & Gamble, China spoke on the government panel. Conference attendees noted that more discussion on IPR protections on the Belt and Road, in particular in Central and South Asia, should continue.
WIPO Workshops in Samoa, Singapore
INTA is strengthening its outreach in Oceania, including the many islands of the Pacific Ocean. Last month, the World Intellectual Property Organization (WIPO) Sub-Regional Multi-Stakeholder Practical Workshop on Intellectual Property, Traditional Knowledge, and Traditional Cultural Expressions was held in Samoa from November 26 through 28. INTA’s Indigenous Rights Committee leadership was represented by Lynell Tuffery Huria (AJ Park, New Zealand).
The Workshop provided an introduction to IPRs, traditional knowledge (TK), and traditional cultural expressions (TCEs), followed by representatives from the registries of Samoa, the Cook Islands, Fiji, and Tuvalu providing an overview of the protection already in place to protect TK and TCEs. Several weeks later, INTA participated in the WIPO Regional Workshop on the International Trademark Landscape, which was held in Singapore from December 4 to 5. INTA Board Member Shunji Sato (TMI Associates, Japan) spoke on the issues facing brand owners with respect to translation and transliteration. The following day, INTA Chief Representative, Asia-Pacific, Seth Hays, spoke on the future of trademarks, detailing INTA’s policy advocacy activity and how governments in the region can access these resources.
Other speakers covered topics such as the Singapore Treaty on the Law of Trademarks, ASEAN Harmonization, and Nice Classification. Ignacio de Madrano of the Arise + IP, and IP Key, spoke on how the European Union (EU) deals with backlogs. Primarily, there are monitoring and metrics that help anticipate trademark workflows. Barnaby Smith, an examiner at IP Australia, shared IP Australia’s methods to address backlogs—including hiring trademark examiners, overtime, performance setting, effective use of resources, and improving the efficiency of examination.
Lorraine Tay (Bird and Bird, Singapore) provided the IP lawyer’s perspective, describing the complexities facing brands looking to do international business and the need for more harmonization of IP practice in the region. Attendees came from 15 countries, including most ASEAN countries, and Bangladesh, Bhutan, China, Fiji, the Maldives, Mongolia, Papua New Guinea, and South Korea.
On December 7, INTA joined a panel at the Singapore Ministry of Foreign Affairs and IP Australia for an organized training for IP registries in Asia.
Attendees included representatives from many islands of the Pacific Ocean, including the Cook Islands, Fiji, Samoa, Tonga, and Vanuatu.
Mr. Hays joined a panel session on “Future Trends and Direction of Trademarks,” along with representatives from WIPO’s Singapore Office and Denis Croze, Director, WIPO Singapore Office; Martin Devlin, Assistant Director, IP Australia; and Ng Kok Wan, Assistant Chief Executive, IP Office of Singapore. Mr. Hays shared INTA’s Emerging Issues Committee’s process for identifying issues that may need to be addressed more substantively by the Association in the future.
Combating Counterfeits and Bolstering Enforcement Efforts
Enforcement and anticounterfeiting were major topics for events around the region, which INTA supported enthusiastically. From November 6 through 9 in Bangkok, Thailand, INTA trademark owner representatives spoke at the USPTO-ASEAN-organized workshop on IP Enforcement and Consumer Behavior. The workshop was a private, closed-door event by invitation only with more than 30 attendees from ASEAN countries, including delegates from IP offices and enforcement agencies, IP attachés, and academic professionals.
The program was designed to acquaint the participants with raising public awareness on IP via various tools and to educate the public to understand anticounterfeiting perspectives, why IP is important, why it should be protected, and why it should be respected and enforced. It also covered substantive aspects of IP and consumer attitudes and behavior. INTA’s Asia-Pacific Associate, Queenie Zhao, attended the event and noted the growing enthusiasm for awareness in the region, in particular to youth, through such efforts as Moot Court competitions to raise the profile of IP law.
On November 13, INTA’s Anticounterfeiting Committee Member Wiramrudee Mokkhavesa (Tilleke & Gibbins, Thailand) joined the UKIPO-Thailand Department of IP's Third IP Enforcement Program in Bangkok as well (see the December 15 Anticounterfeiting Update
for more information).
Working on the Country Level: The Philippines, Vietnam, South Korea, and Indonesia
Training in the Philippines
On December 6, INTA participated in the International Criminal Police Organization (INTERPOL) Training against Illicit Pharmaceutical and Health-related products in Manila, the Philippines. Editha Hechanova (Hechanova, Bugay, Vilchez & Andaya-Racadio, Philippines), a member of the Anticounterfeiting Committee, participated on behalf of INTA.
Members of the Philippines National Police, Philippines Food and Drug Administration, Attorney General’s Office, and customs attended. Representatives from INTERPOL and Food Industry Asia also spoke at the event.
Ms. Hechanova’s presentation focused on the work of INTA’s Anticounterfeiting Committee in the region, including global efforts to stop the dangerous spread of counterfeit goods.
Seminar in Vietnam
On October 29, INTA co-organized an event with the Vietnam Chamber of Commerce (VCCI) and Industry, the Vietnam IP Association (VIPA) and the Ministry of Science and Technology (MOST) in Hanoi, Vietnam, as an ongoing part of INTA’s Memorandum of Understanding (MoU) with the Vietnamese government. The focus of the public seminar was on brand valuation and commercialization and included more than 100 representatives of more than 30 Vietnamese businesses, law firms, and the government.
Director Hoang Quang Phong of VCCI, President Mai Ha of VIPA, Dr. Nguyen Nhu Quynh of MOST, and Mr. Hays opened the event. The organizations emphasized the importance of brands to the economy of Vietnam and the growing need to move into value-added sectors, with brands as a means to do so.
Presentations followed by branding and valuation experts, as well as a case study from industry. Nguyen Suc Son (Richard Moore Associates, Vietnam) discussed the various pathways taken by brands to increase their value and overall awareness. Johnathan Ooi (PwC, Vietnam) spoke on the basic principles his company uses to value a brand and the various methodologies that can be undertaken to put a price tag on this intangible asset. Finally, Nguyen Quang Dung (Petrolimex, Vietnam) discussed how his company developed its brand and how a future rebranding will help position it away from look-a-like infringers.
A similar seminar will be provided in late February in Ho Chi Minh City and will include local business owners and practitioners from the dynamic and interpleural commercial center of Vietnam.
Korean Trademark and Design Week
On October 30‒31, INTA joined the events for the Korean Trademark and Design Week, including the 2018 Seoul International Trademark and Design Forum, the INTA-Korean Intellectual Property Office (KIPO) Trademark and Design Protection Symposium, and the TM5 user meeting.
KIPO Commissioner Park Won Ju opened the event and spoke on how KIPO has set out to make the office relevant for the Industrial Revolution 4.0 (IR4). The office will implement new rules and regulations and create an artificial intelligence patent network called Patent Net 4.0.
On October 31, INTA and KIPO co-organized a symposium on trademark and brand protection. Opening the symposium was Lee Jaewoo, Director General of the Trademark and Design Examination Bureau. He noted the increasing filings for trademarks and designs in South Korea over the past several years and the need for Korean businesses to continue this trend. INTA Board Member
Louis Chan (Procter & Gamble, Singapore) presented on behalf of INTA, noting that the global influence of Korean technology and art and the important role that trademarks and design play in creating value for the country in these economically important areas.
The first panel of the day focused on regional trends with regard to infringement of trademarks and brands, including the drivers of these infringements, such as free trade zones (FTZs). Mr. Hays moderated the panel. Dong-Won KIM (Kim&Chang, South Korea) spoke on the dynamics of design protection and recent trends in Korea. Piotr Stryszowski (Office of Economic Co-operation and Development, France) shared recent global research on the impact of FTZs. Trina Devera (CROPlife, Singapore) spoke on case studies in the agriculture sector and, in particular, how counterfeiting harms farmers in less developed countries. Finally, Ai-Leen Lim (AWA Asia, Hong Kong) recapped how recent design infringement cases in China have been shifting, the opportunities that exist, and the challenges in protecting designs in China.
The second panel focused on a primary driver of counterfeit trade in Northeast Asia, online e-commerce, and was moderated by Angela Kim (Kim & Chang, South Korea), a member of INTA’s Anticounterfeiting Committee. Kang Jiho, Assistant Deputy Director of KIPO, spoke on the measures against counterfeit goods and recent accomplishments resulting from KIPO’s enforcement efforts. He shared stunning statistics that demonstrated the impressive increase in counterfeit seizures since KIPO took on enforcement efforts a few years ago. Steve Lee (e-Bay, South Korea) shared e-commerce platform best practices. Norito Ohtani (Association Against Counterfeit Product Distribution [AACD], Japan) spoke on AACD’s role in Japan’s online anticounterfeiting in the second-hand luxury goods area. Joyce Chen (ICANN, Singapore) shared with the audience the current situation with regards to the WHOIS database under the General Data Protection Regulation (GDPR), namely the recent removal of publicly identifiable data for domain name holders. Jonathan Selvasegaram (REACT, Singapore) spoke on efforts to combat cross-border enforcement concerns in the complex region of Southeast Asia. Finally, Yusun Woo (Louis Vuitton, South Korea) shared the industry-to-industry cooperation projects undertaken by luxury brands in Korea with e-commerce platforms.
Important work continues to remain for engagement in Korea on the fight against counterfeits online, in particular, as recently highlighted by the European Chamber of Commerce of Korea (ECCK) in its annual White Paper’s IP chapter.
Elsewhere in Asia, a major anticounterfeiting workshop in the region was organized with the Anticounterfeiting Society of Indonesia (MIAP) with INTA’s Anticounterfeiting Committee on November 15 in Jakarta (see the December 15 Anticounterfeiting Update
for more information).
Continuing the Conversation in China
INTA’s work in China continued unabated during the final quarter of the year.
From November 3 through 5 in Xiamen, China, INTA joined the IP Key-CAASA- organized Online Anticounterfeiting Summit. This event drew hundreds of attendees and high-level delegates from the China National IP Administration (CNIPA).
INTA joined a panel session on non-legislative tools available for brands to use to protect themselves against counterfeits. Mr. Hays shared with the audience the newest tools and research released by INTA to help protect brands, including the Voluntary Best Practices to Combat Counterfeits Online. The panel session was moderated by Elliot Papageorgiou (Clyde and Co., Hong Kong) and included presentations from Chinese brand owner Cao Wei (Xiao Guan Cha, China); Wu Huanbin (Tencent, China); and representatives of firms dedicated to online enforcement, such as Peter Szyszko (White Bullet, UK), and Zhang Xiaoming (Alimama, China).
INTA members participated in one of China’s largest and most notable events in 2019—the Shanghai Import Expo, which took place from November 5 through 10. INTA was invited to join a panel session on IPR protection organized by the State Administration of Market Regulation (SAMR). Professors, judges, and officials from SAMR joined a panel session with INTA member Iris Chao (J&J, China).
Further, INTA continued collaborating with partners in China, including by attending a Quality Brands Protection Committee (QBPC) member event, and the opening ceremony of INTA member Alibaba’s legal service marketplace on December 14 in Beijing.
Strengthening INTA’s Digital Asia Project
INTA will be expanding its outreach to stakeholders in the related rights areas of data protection, privacy, Internet, and technology in Asia in 2019 under the 2018‒2021 Strategic Plan’s “Digital Asia” project.
Recently, INTA has been working closely with partners in the region to raise awareness on ICANN (Internet Corporation for Assigned Names and Numbers) policy and the work of the Internet Committee in this area.
The Asian International Arbitration Centre (AIAC) hosted a training program on domain name disputes in Kuala Lumpur, Malaysia, on November 29. INTA, DotTrademark, and the International Intellectual Property Institute (IIPI) supported this event. Dennis Cai (DotTrademark and IIPI, China)
and INTA member Francine Tan (Francine Tan Law Corporation, Singapore) co-presented on the importance of domain names for business in the Internet economy and global trends and issues affecting online business.
ICANN64 will come to Asia next year, March 8‒14 in Kobe, Japan. Members interested in participating in INTA events on these topics in the region can reach out to Lori Schulman, Senior Director for Internet Policy, at firstname.lastname@example.org
, or Seth Hays, Chief Representative, Asia-Pacific, at email@example.com
INTA’s Asia Pacific Representative Office, based in Singapore, represents the Association’s 815 members across the region. Working in collaboration with staff at INTA’s headquarters in New York City, the Asia Pacific Representative Office leads the Association’s policy, membership, marketing, and communications initiatives throughout this region. To learn more about INTA’s activities in the Asia Pacific, please contact INTA Chief Representative Officer Seth Hays at firstname.lastname@example.org.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2018 International Trademark Association