ASEAN IP Express – February 2010


Malaysia: McDonald’s loses to McCurry

The Malaysian Federal Court has confirmed that the McDonald’s burger group cannot stop a local party’s use of the name McCurry. McDonald’s claim was based on passing off. It complained that there would be confusion in the defendant’s use of McCurry when applied in similar style as McDonald’s – white words with red background.

The court decided that:

  1. McDonald’s should not be given a monopoly over the prefix ’Mc’.
  2. There was no evidence that customers would mistakenly think the two businesses were related;
  3. McDonald’s signage typically included the golden M arch, which McCurry’s did not.

McDonald’s had better luck in Singapore in 2007 when it successfully opposed the registration of MacCoffee.

Singapore: AMANUSA Tarnishment

The Singapore court has allowed a passing off claim against a developer who uses the name AMANUSA for a private housing development. Amanresorts, the Plaintiff, operates resorts under the AMAN name in various exotic locations such as India, the USA, Sri Lanka and Bali. In Bali, its resort operates under the name AMANUSA.

The Plaintiff has two sales and administration offices in Singapore, but does not operate any resort business there. It is generally thought to be difficult for a plaintiff to prove goodwill where the service is not delivered in the country.

The court found in favour of the Plaintiff on the following grounds:

  1. There is a customer base in Singapore to travel to the exotic resorts operated by the Plaintiff
  2. The Defendant’s local housing project was likely to tarnish the goodwill attached to the ‘Aman’ names because of the similarity in name and the difference between the quality of the accommodation provided by the Defendant and the high-end hotel resorts provided by the Plaintiff.

The case is noteworthy for its application of the concept of ’tarnishment’ or loss of exclusivity. This is likely to give Singapore IP lawyers greater flexibility in dealing with dissimilar products and services in future.

Singapore: Expert witnesses

In September 2009, the Singapore High Court, in ASM Assembly Automation v Aurigin Technology Pte, invalidated a patent relating to a process of mounting integrated circuit packages onto printed circuit boards. The case is instructive on the importance of expert witnesses.

The court ruled out the Claimant’s American patent lawyer on the ground that he was not the man skilled in the art. In an earlier padlock patent decision, the same court had held that the skilled person would be the person skilled in the art of making locks.

The views of the Claimant’s other witness, a local university professor, on novelty and inventiveness, were also rejected. The court said:

“What matters is not an expert’s conclusion but the reasons for the conclusion…. [The professor’s] evidence… showed that he was not familiar enough with the prior art. On far too many occasions, he had to retract his views during the trial.”

The Court preferred the evidence of the Defendant’s expert, a former senior executive from a US electronics firm. It said of him: “A mechanical engineer, he holds 11 patents, 5 of which relate to [relevant] technology. His evidence was most useful to the court”, adding that his evidence “showed his mastery of the subject, with the reasons for his conclusions explained very clearly and authoritatively.”

The costs of patent litigation are often magnified by expert witness costs. However, an expert witness can make or break a case the case, as their evidence is often critical.

Indonesia: Translation error in patent specifications

Translation errors can be fatal to enforcing what would have been a valid patent. There is no avenue for post-grant amendment to rectify errors at the Indonesian patent office.

It is common to find mistakes in translations of patent specifications. This often arises when the translator does not appreciate the intent or object of the specification. Rather than communicating the true scope of invention as intended, the translator sometimes delivers a result that is not much different from word-for-word translation.

One approach to address this risk is by working the resultant translation backwards to the original language e.g. English. Comparing this ’backward translation’ with the original specification (the version in the original language) helps to pick up translation errors more readily.

This process can be time-consuming. One option is to put only the main claim and any other further independent claims through this check. This is because the patent would be lost completely if the main independent claim suffers from any error that causes ambiguity in the main scope of protection.

Indonesia: Court boosts trade mark owners

The Indonesian Commercial Court has raised the hopes of trade mark owners facing the grim and costly task of tackling trade mark infringers in Indonesia.

In Rudi Handojo v Director-General of Intellectual Property Rights and Colin Edwards, the plaintiff sought to legitimise his counterfeiting operation by trying to register a trade mark belonging to the Australian company, GPI Automotive. GPI's managing director, Colin Edwards, opposed the application, filed an application in his own name for the well-known Black Diamond trade mark and notified the Trademark Office of the pirate trade mark application.

The Trademark Office temporarily suspended Rudi Handojo's application. Edwards' application proceeded to registration, and the Trademark Office then rejected Handojo's application based on a prior registration and bad faith.

Handojo brought proceedings in the Commercial Court claiming that the Trademark Office had wrongfully rejected his application because it was filed first. Edwards counterclaimed for trade mark infringement. Edwards' evidence of Handojo's use of the Black Diamond mark demonstrated how Handojo had copied GPI Automotive's packaging, right down to the use of Australian contact details.

The Commercial Court upheld the Trademark Office's decision and ordered Handojo to pay Rp200 million (about $20,000) in damages for trade mark infringement. This is the second highest damages awarded by this Court to date.

The case is noteworthy because the Court allowed a counterclaim for trade mark infringement to be heard in the same proceedings as the cancellation action. Counterclaims are rarely accepted by Indonesian courts and defendants in Edwards' position are normally required to file separate proceedings, which significantly increases the cost and time involved.

The case is now under appeal and is expected to be heard by the Supreme Court sometime in early 2010.

Indonesia: Proving non-use gets easier

There are indications that the Commercial Court is relaxing its very strict evidential rules, making it easier for trade mark owners to delete unused pirated marks.

Years of the Trade mark Office's narrow application of trade mark principles has left the Register littered with problematic trademarks. These range from pirate trade marks that have been all but abandoned by their local owners, to descriptive and non-distinctive marks.

There is no simple method for clearing the Register of unused trade marks. Often the only option is to bring non-use deletion proceedings in the Commercial Court. The burden of proof is on the plaintiff, and does not shift to the defendant trade mark owner upon a certain threshold being met. Even in undefended proceedings the plaintiff must prove non-use to the satisfaction of the Court.

Proving non-use can be problematic. The cautious approach is to obtain evidence from market surveys in key population centres. However, proving a trade mark is not used in one region does not prove that it is not used in Indonesia at all.

Recent Commercial Court decisions indicate that the court is taking a more practical approach. In Pt Pacific Millenia Pangan Makmur v Pt Ambala Mas, the Commercial Court accepted evidence from the food and drug agency that no products bearing the trade mark were registered with the agency as conclusive evidence of non-use. Similarly, in The Garden Company Limited v Pt Serena Indopangan Industri the plaintiff succeeded in deleting the defendant's trade mark based on an investigator's report and confirmation from the food and drug agency that no products bearing the trade mark were registered with the agency.

Neither case was appealed, so it remains to be seen if the Supreme Court shares the Commercial Court's more relaxed approach to proving non-use.