The Intellectual Property Office of Singapore (“IPOS”) has seen various different circumstances arising from the grey areas of the Trademarks Rules since the relevant amendments were made eleven years ago. One of the main problems arising in this regard relates to the issue of consent to late requests for Extensions of Time during Opposition proceedings. The Registrar is at times faced with difficulties in balancing the needs of adhering to procedural requirements against the need for fair adjudication. However, over the years, a number of cases have helped shed some light in this area.
The ushering in of a new year usually brings with it new resolutions and a fresh start to everyone. Likewise, the Malaysian Intellectual Property Corporation (better known as MyIPO) has joined the bandwagon and introduced some changes to our Industrial Design Regulations, with the changes set to be enforced very, very soon – on 15 February 2012!!
With such short notice, let’s bring you up to date with the crux of the changes:
Long gone are the days where the word “Subway” only brought to mind visions of underground trains. Nowadays, more often than not, our thoughts are filled with tantalising images of fresh, tasty and succulent sandwiches, and… clothing? Well, Intellectual Property Office of Singapore (IPOS) surely thinks so!
In this case, the proprietor of Prosperous Enterprise (the Applicant) had registered the mark “” in Class 25, for clothing. He was in the business of selling women’s apparel. In 2005, he forgot to renew the registration of his mark, causing the registration to subsequently lapse. Upon realizing this, he sought to re-register his trademark in 2007, but once the application was published in June 2007, Doctor’s Associates Inc (the Opponent) , owner of the famous “” trademark in a multitude of classes, wasted no time in opposing the application. The Opponent is the proprietor of restaurants, and is in the business of selling sandwiches and other food and drinks around the world.
Dong-A Pencil Co., Ltd (“Dong-A”) is an established manufacturer of stationery and office supplies based in Seoul, Korea. Established in 1946, Dong-A has been producing writing instruments and the like for over 65 years, so the fact that its products are distributed throughout the world and have gained considerable repute should come as a surprise to few.
It is common in business that where there are successful products or services, competitors will be instantly attracted to the concept, like bees to honey, resulting in the establishment of businesses with similar or identical products or services, whether through legal or illegal means.
As consumer electronics giants Samsung and Apple engage in a global battle over infringement of each other’s computer tablet and smartphone patent portfolios, two Malaysian organizers of exhibitions for computer ware have engaged in a legal battle over the selection and use of a name for the trade fairs.
The Association of the Computer and Multimedia Industry of Malaysia (known as “PIKOM”), with a membership of over 1,400 members, has been organizing IT/computer fairs under the name in the country for 15 years.
Do “VEURO” and “EURO-R” look or sound similar to you? Well, the Indonesian Trademark Office believed so, and thus began the case between Sumitomo Rubber Industries Ltd (“Sumitomo”) and the Trademark Appeal Commission.
Sumitomo, a tire manufacturing company from Japan, filed an application for the “VEURO” trademark for goods in class 12. By the time the application entered the substantive phase, the application was refused by the Trademark Examiner due to similarity with the existing “EURO-R” trademark, under registration number IDM000104004 in class 12, in the name of Soe Bie Lian, an Indonesian citizen.
In this rather interesting opposition proceeding, the Applicant, Staywell Hospitality Group Pty Ltd had applied to protect the trademark “Park Regis” in Classes 35 and 43, claiming, amongst others, business management, business administration, hotel services, hospitality services and etc. The Applicant, who originated from Australia, is the owner of a chain of 3- or 4-star hotels. They have used the “Park Regis” mark in Australia since 1962.
The application was published in May 2008, and was opposed by Starwood Hotel & Resorts Worldwide, Inc and Sheraton International, Inc (“the Opponents”), owners of 5-star or higher luxury hotel businesses, including trademark registrations for “St. Regis” in 80 countries worldwide.
In a recent case at the IP Court in Kuala Lumpur, the Court held that Ecotherm (TFT) Sdn Bhd’s Malaysian Patent No. MY-121188-A was valid but at the same time held that the parties sued by Ecotherm in this case were not infringing the said patent.
The patent infringement action in question relates to the conveyor system for transporting formers used in a dipping process in which rubber products such as gloves are formed on the formers. The suit was brought by Ecotherm (the plaintiff) against Kendek Industry Sdn Bhd (the 1st defendant) and other defendants – Tuck Hua Engineering Sdn Bhd (the 2nddefendant) and Top Glove Sdn Bhd (the 3rd defendant).
As pharmaceutical companies constantly work to develop new products, there are sure to be multiple drugs – either already available or in various stages of trials and testing – to alleviate any given ailment or the symptoms thereof. These companies rely heavily on IP law to ensure that their product and reputation remain unharmed by possible infringers, especially seeing that profits garnered by monopolizing a particular pharmaceutical product can reach up to billions of dollars. In the case of Rotta Research Laboratorium SpA v Ho Tack Sien Ors, the latter claimed to have independently developed the glucosamine sulphate based drug Artril 250, which was similar to Viartril-S, a drug developed and sold by the Plaintiffs, Rotta Research Laboratorium SpA and Antah Pharma Sdn Bhd, both of which were used to treat osteoarthritis.
Hendry Yogiaman and Andi Lesmana are two Indonesians who claim to be inventors of the “Spring Buffer”, a shock absorbing automobile spare part made from rubber. They filed a Simple Patent for their invention on 8 December 2006, which was approved by the Patent Office and registered under registration number ID0000770S on 14 December 2007. As the Simple Patent holder, they had full rights to use and exploit their invention.
After some time, the two inventors were troubled to discover that another product similar to their invention had been sold without their consent. So, being the owners of the Simple Patent for the invention, they were eager to stop what they saw as an infringement of their rights. They officially submitted a report to the Investigation and Litigation Section of Patent Directorate (“Investigation and Litigation Section”) on 12 September 2008, which acted upon the report by conducting an investigation.