Axis News letter May Iune 2015

Intellectual Capital Consulting | Patents | Trade Marks | Registered Designs

Licensing and Transactions | Technology Transfer

Content

1. Axis Perspective on ASPEC - Page 4[Preview: The ASEAN Patent Examination Cooperation (ASPEC) is the first

regional patent work-sharing programme among the 9 participating ASEAN

Member States]

2. Thailand Trademark Guideline - Page 6[Preview: This article is a guide to the protection of trademarks in Thailand, which

will help applicants acquire their registrations.]

3. Parallel Import in IP Law and practice on medical market in

Vietnam – Page 7[Preview: The concept of ‘parallel import’ originates from exhaustion doctrine,

which identifies the limits for exclusive Intellectual Property Rights (IPR) and the

balance between the protection of IPR and ensuring the market flow, as well as

maintenance of fair competition, balanced between the interests of the IPR

owners and the interests of consumers.]

4. Philippines remains clear of US’ IP watch list – Page 10[Preview: The Philippines continues to avoid the U.S. government’s watch list of

countries with intellectual property rights (IPR) problems for the second

consecutive year.]



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What is “Axis Perspective”?

We at Axis would like to share with our colleagues and clients on our insights of how

does IP work to their benefits of interest within ASEAN region as well as in China, Japan

and Korea.

What is “ASPEC”?

The ASEAN Patent Examination Cooperation (ASPEC) is the first regional patent work-

sharing programme among the 9 participating ASEAN Member States (AMS): Intellectual

Property (IP) Offices of Brunei, Cambodia, Indonesia, Laos, Malaysia, Philippines,

Singapore, Thailand and Viet Nam. It expedites and improves the quality of the patent

search and examination processes at participating AMS leading to reduced costs for

applicant.

AXISPERSPECTIVEAXIS PERSPECTIVE ON ASPEC

(ASEAN PATENT EXAMINATION COOPERATION)

Launched in June 2009; Operates in English; 9 Participating ASEAN countries

· Brunei

· Cambodia

· Indonesia

· Laos

· Malaysia

· Philippines

· Singapore

· Thailand

· Vietnam



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Procedure

AMS

“First IP Office”

Search & Exam

Request

Search & Exam

Documents

ASPEC Request

AMS “Second IP Office”[Any other AMS]

Filed

Expedited Examination Processes

(Advanced out-of-turn till grant)

Benefits

Reduced work

Lower cost

Faster turnaround

Improved quality of S&E report

Advanced out-of-turn until grant

Expedited examination

No official fee for ASPEC request

Better Quality

Cost

Effective

Time Savings

Eligibility

Filed a corresponding patent application for the same invention in any

participating AMS IP office

S&E linked by Paris Convention Priority or PCT application

The search and examination report issued by any of the AMS IP offices has at

least one claim that is allowable/patentable

Required Documents

1. A copy of S&E report of a

corresponding application from

the First IP office

2. A copy of examined with at least

one allowable claim

3. ASPEC Request Form

4. Cited documents (if requested by

the Second IP office)

5. Translation of examined claims and

cited documents (if requested by

the Second IP office)



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Thailand Trademark Guideline

Every business needs to know the basic of intellectual property (IP)

protection, otherwise you may not able to benefit from your

intellectual property. Therefore, understanding of IP is necessary.

The types of IP can be divided into four main aspects –Patent,

Trademark, Copyright and Trade Secrets. You need to be aware of

the IP types and assets that you have in order to seek the

appropriate IP protection.

This article is a guide to the protection of trademarks in Thailand,

which will help applicants acquire their registrations.

Protection of a trademark is limited to the territory in which the

application is registered. It is recommended that you engage an IP

firm to assist you in acquiring legal protection of your trademarks

and other IP, as you may face complicated legal matters during

the registration processes.

Registering a Trademark in Thailand

There are four types of marks that can be protected in Thailand,

including trademarks, service marks, certification marks, and

collective marks. In addition, well-known marks can be protected if

applicants can provide evidence proving the reputation of the

marks.

Some marks are prohibited under Thailand law, for example:state

arms or crests, royal seals, official seals, Chakkri emblems;national

flags of Thailand, royal standard flags or official

flags;representations of royal names or royal monograms,

orrepresentations of the King, Queen, Heir to the Throne, or

members of the royal family;



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As mentioned above, a lack of understanding is made your IP asset confronted the difficult situations when you want to protect your mark from the examiners. In addition, if you mark is not protected yet, you may struck with hard issue against you IP asset. It can be concluded that trademark in Thailand is complicated, and

Your mark is identical or similar to an existing trademark or not. This could cause difficulties for trademark owner when you want to protection your mark because in Thailand the identical or similar to an existing mark is unclear, so our firm has experienced over 15 years to deal with trademark matter. We will advise you how your mark will be protected in Thailand and recommend you how to avoid prohibition by law. We offer our service relating to infringement in Thailand.

A lack of understanding of IP can cause you to encounter difficult situations when you want to protect your mark from competitors. Trademark registration in Thailand is a complicated process and applicants should consider engaging an IP firm to assist in their trademark registrations. Our firm has more than 15 years of experience in dealing with IP matters. We can advise you on how your mark can be protected in Thailand and recommend you how your mark can avoid the prohibited marks. We can also offer our service relating to trademark infringement in Thailand.

Thailand Trademark Guideline

Athiwat Rungsinchaloemrat

Axis Associates International, Thailand

IP and Legal Counsel

Email : [email protected]

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mailto:[email protected]



What is Parallel Import?

The concept of ‘parallel import’ originates from exhaustion doctrine, which identifies the limits for exclusive Intellectual Property Rights (IPR) and the balance between the protection of IPR and ensuring the market flow, as well as maintenance of fair competition, balanced between the interests of the IPR owners and the interests of consumers. When products bearing IPR are brought into a market by IPR proprietors or with their consent, IPR proprietors no longer have control over the distribution and commercial exploitation of the products within the country, region, or worldwide.

Parallel import is an economic phenomenon related to genuine products or products being protected under IP law. After being brought to the local market by the IPR proprietors or with their consent via official distribution channels, third parties (without the IPR proprietors’ permission) import from foreign markets with lower prices into the local market having higher prices, and sell these products with prices in between the foreign markets and the local market.

Parallel import in IP Law of Vietnam

Vietnam adapts international exhaustion regime to IPR.

Vietnam IP Law regulates that the proprietors of IPR shall not have the right to prevent others from transporting, importing, exploiting the utilities of the products bearing the trademark, patent or registered design which were lawfully put on the market either in Vietnam or overseas by the proprietor or with their consent.

Parallel Import in IP Law and practice on medical market

in Vietnam

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The acts of circulating products include acts of selling, displaying for sale and/or transporting. The products put on the market means the products are lawfully circulated either in Vietnam or overseas by the proprietor of IPR, or by the party that has the proprietor’s consent either by way of licensing or an agreement.

Parallel Import in controlling prices of pharmaceutical products in Vietnam.

Parallel import was taken into consideration after Zuellig PharmaVietnam’s (ZPV) – a company belongs to Zuellig Pharma Group –announcement to terminate the distribution of medicines in Vietnam in September 2004. With the concern that the distribution termination of this multinational company would cause great difficulties for the drug market due to the lack of active ingredients and proprietary medicine. In regard to patented medicines which are in the period of IP protection, such as those exclusively distributed by ZPV in Vietnam, the Ministry of Health had a discussion with the local pharmaceutical companies and issued a regulation that promotes parallel import of medicines for prevention and cure of human diseases.

Accordingly, the Vietnamese enterprises having the function of directly exporting and/or importing medicines, as well as foreign enterprises supplying medicines into Vietnam, are allowed to parallel import the medicines which have the same specific names, active ingredients, contents, and pharmaceutical forms as the medicines which have been granted by the Ministry of Health for circulation in Vietnam. Parallel import of medicines is allowed if the manufacturers and distributors do not supply or insufficiently supply the medicines for the treatment demands, or are currently selling the medicines in Vietnam at higher prices than the retail prices of the same medicines in foreign countries or in the countries where the economic conditions are similar to Vietnam.


in Vietnam

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in Vietnam

The parallel-imported medicines must be labelled before being

putting into circulation. The label must indicate the full contents of

the medicines, such as them being parallel-imported medicines; the

importer's name, serial number of import permit; and date of grant

of permit. Additionally, the prices of the parallel-imported

medicines must be lower than the wholesale and retail prices of the

medicines which have the same specific names and have been

granted registration numbers in Vietnam.

The regulation of parallel imports by the Ministry of Health helps to

stabilize drug prices, allowing the consumers to benefit more from

affordable medical prices.

Parallel import has brought positive contribution in helping people

to be able to access IP-protected products with more reasonable

prices. However, it also brings in new challenges in controlling the

markets and harmonizing the benefits of the IPR proprietors,

distributors, and most importantly the consumers.

Dao Thi Thu Hang

Axis Intellectual Capital, Vietnam

Vietnamese Registered Patent Attorney


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Philippines remains clear of US’ IP watch list

The Philippines continues to avoid the U.S. government’s watch list

of countries with intellectual property rights (IPR) problems for the

second consecutive year.

Recently, the Office of the United States Trade Representative

(USTR) published its 2015 Special 301 Report (Report), an annual

review of the state of IPR protection and enforcement in U.S.

trading partners around the world.

The Report reviewed 72 trading partners of the U.S., and placed 37

of them on the priority watch list or watch List. U.S. laws allow

Washington to impose economic sanctions on trading partners or

eliminate tariff perks if they fail to improve IPR protection regimes.

The Philippines was cut-off from the IPR watch list in 2014, ending a

25-year record as violator of IPR since 1989. It was a result of the

country’s enactment of "a series of significant legislative and

regulatory reforms to enhance” IPR protection and enforcement.

This year, the Report acknowledged the important initiatives and

developments in the Philippines which strengthened IPR protection

and enforcement internationally. Specifically, administrative

enforcement reforms have resulted in “streamlined procedures,

enhanced inter-agency cooperation, and more enforcement action,

including increased seizures of pirated and counterfeit goods.”

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Philippines remains clear of US’ IP watch list

Moreover, the Report cited the Philippines under the Best IPR

Practices section, for her commitment to a “whole-of-government

approach”. This was “critical to enhancing the effectiveness of IPR

enforcement and has resulted in positive reports from a number of

affected stakeholder groups”, a statement in the Report said.

Sought for comment by Business World, Allan B. Gepty, officer-in-

charge at the Intellectual Property Office of the Philippines (IPOPHL),

said: “This is a recognition of hard work and sustained drive to

improve the protection and enforcement of intellectual property

rights in the country. It means that our national government gives

priority to IP as a tool for economic development.”

Mr. Gepty also reportedly said that being out of watch list for the

second straight year shows acknowledgement of “good coordination

and working relationship of various government agencies involved in

IP enforcement”, as well as “productive partnership with the private

sector.”

“With a reliable IP regime, we can expect more foreign investments –

particularly IP-intensive industries — in the country and improved

competitiveness,” Mr. Gepty was quoted by Business World.

Maria Rois S. Tan

Axis Intellectual Capital, Singapore

Philippine attorney, J.D.


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Contact us

Axis Hub

[email protected]

Axis Intellectual Capital Pte Ltd

1 Pemimpin Drive #02-03 One Pemimpin

Singapore 576151

T: +65 6323 6322 | F: +65 6323 6383

Local: [email protected]

Axis Associates International Co., Ltd.

3F, 211/6 Ratchadaphisek Rd. Din-Daeng, Din-Daeng

Bangkok 10400, Thailand

T: +66 02-276-6188| F: +66 02-276-6189

Local:[email protected]

Axis Intellectual Capital, Japan

In Association with Axis Patent International

Shimbashi i-mark Bldg. 8F, 6-2 Shimbashi 2-Chome

Minato-ku, Tokyo 105-0004 Japan


Axis Intellectual Capital, Vietnam

Licogi 13, Khuat Duy Tien Str, Nhan Chinh Ward

Than Xuan Dist, Hanoi, Vietnam

Tel: +84 4 6282 4112 Fax: +84 4 6282 4113


Axis Intellectual Capital, Malaysia

Lot 1B, Podium 1, Menara Ansar, No.65

Jalan Trus, 80000, Johor Barhu, Malaysia

Tel: +607 218 5112 Fax: +607 218 5100


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