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IP Expert Elio De Tullio

IP Matters in the Food & Beverages Sector

related to Vietnam, Singapore and

Indonesia

South-East Asia IPR SME Helpdesk

21 March 2017

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• Provide information to agri-food operators concerning intellectual property rights in Vietnam, Singapore and Indonesia

• Facilitate the market entry for agri-food operators

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• 23 March: ‘How to set campaign objectives, impact indicators and how to measure results’

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Name: Mr. Elio De Tullio

Firm: De Tullio & Partners Location: Rome, Italy Email: [email protected]

Elio De Tullio is an Italian lawyer admitted at the bar of Bari and trade mark attorney. After 10 years of experience in IP matters, he founded in 2005 the law firm De Tullio & Partners, with offices in Rome and Bari and a liaison office in New York. Managing Partner of De Tullio & Partners, he acts as trade mark attorney in the strategic assessment of IP protection and in prosecution and opposition processes at domestic and international level. He is also a litigation lawyer before the Italian Courts specialized in Intellectual Property. He specializes on trademark, design and patent issues, from a strategy, business intelligence, competition, filing and prosecution perspective. He has written some articles on Italian and European law on intellectual property rights which have been translated into Chinese and South-East Asia languages.



Speaker’s bio

mailto:[email protected]

• Have you registered your IP rights in Vietnam?

a) Yes, several rights.

b) Yes, one IP right.

c) No, but I am considering doing it.

d) No

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Poll I

Case Study I

AJINOMOTO/AJINO-TAKARA (Vietnam)

• Ajinomoto, Inc is the owner of the trade mark “AJI-NO-MOTO”, registered for Monosodium Glutamate.

• The company Ha Trung Hau Co., Ltd started to commercialize the same product using the trademark “AJINO-TAKARA”.

• On March 2015 Ajinomoto filed a complaint to the Market Management Bureau (MM Bureau) of Danang against Ha Trung Hau Co., Ltd arguing the similarity of the marks.

• On July 2015 the MM Bureau seized products “AJINO-TAKARA” on the basis of a similarity report issued by the Vietnam IP Research Institute. The similarity was confirmed by the National Office of IP and the MM Bureau confirmed the administrative infringement.

• Ha Trung Hau Co., Ltd filed an appeal before the People’s Committee of Danang (a local administrative entity) against the two reports and the Committee expressed doubts regard the use of said reports and the necessity of a civil enforcement.

• The MM Bureau requested instructions from the Ministerial Department competent for IP (Department of Science and Technology) which stated that there was an infringement according to IP Law.

• At this point, the People’s Committee of Danang sanctioned Ha Trung Hau Co., Ltd with a fine of 500 million dong (about Euro 20.000) for trademark infringement.

• Ha Trung Hau Co., Ltd filed a civil action against the decision of the People’s Committee asserting that the case should have been brought before the civil court. The civil court suspended the contested decision and the case is still pending.

Reference: https://ipthinker.wordpress.com/2016/02/15/vietnam-ajinomoto-v-ajinotakara-1/

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https://ipthinker.wordpress.com/2016/02/15/vietnam-ajinomoto-v-ajinotakara-1/






















FOCUS Case Study I

• In case of IPR infringements in Vietnam, there are three main enforcement tools: administrative actions, civil actions and criminal prosecution. Most IP disputes are handled by administrative authorities instead of litigation Courts.

• Before registering (or starting to use) a mark, IPR preliminary searches should be carried out, since it is not possible to register a trademark similar to an already filed or registered trademark for similar or identical products.

• The use of a sign similar to an earlier registered trademark constitutes an infringement of a prior right.

• It is useful to have an expert opinion (i.e. a report by the Vietnam IP Research Institute or the National IP Office) to have more chances to defend your rights.

• IPR enforcement in Vietnam is problematic; it is therefore essential to register your IPR to better defend such assets.

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TM AND GIs IN VIETNAM

Trade marks:

• Trade marks consisting in sounds and/or smells are not protected. • Protection for well-known trademarks is recognized, but the reputation of a trademark

is difficult to prove. • It is possible to apply for the cancellation of a trade mark in case of non use for 5 years

after its registration. • It is possible to oppose a trademark application at any time after the publication of the

application until the issuance of the registration certificate. • The registration procedure takes up to 15 months. • The protection for registered trademarks lasts for 10 years from the filing date, and it

can be renewed indefinitely every 10 years. • Vietnam operates under a “first-to-file” system.

Geographical Indications:

• GIs are protected and can be registered in Vietnam since 2006. • Individuals or institutions that produce those goods (or organizations which represent

them) and administrative authorities of the origin area can apply for the registration. • Foreign applicants can register a GI, but they have to appoint a representative. • The protection lasts indefinitely.

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Have you dealt with infringers in Indonesia? If yes, how?

1) No, I have not.

2) Yes, I used civil actions.

3) Yes, I used criminal persecution.

4) Yes, I used customs seizures.

5) Yes, I used private mediation / warning letters.

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Poll II

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Case Study II MONSTER – MONSTER ENERGY (Indonesia) • The American companies Monster Energy Company and Hansen Beverage

Company are the owners of many registrations for the trademarks “MONSTER” and “MONSTER ENERGY”, in various classes, all over the world, including Indonesia.

• Nevertheless, the applications for the registration in class 5 of their trademarks were rejected by the Indonesian IP Office (DGIP) because the trademarks were similar to a previous local mark “MONSTER” owned by Andria Thamrin.

• The American companies filed an appeal against the refusal decisions and at the same time filed a cancellation request for non-use against the local trademark MONSTER.

• The Monster companies produced several evidence to support their claim showing the non-use of the mark, also showing that Thamrin had no authorization for beverages by the Indonesian National Agency for Drug and Food Control.

• Thamrin argued that the non-use claim was filed while the appeal against the refusal of the American company’s marks was still pending.

• The Central Jakarta Commercial Court ruled in favor of Thamrin and the Supreme Court confirmed this decision.

• Therefore, it is advisable not to have simultaneous proceedings in Indonesia on a similar object, even if the actions are different.

Reference: http://ipkomododragon.blogspot.it/2016/03/hansen-beverages-monster-energy-case.html

http://ipkomododragon.blogspot.it/2016/03/hansen-beverages-monster-energy-case.html





















FOCUS Case Study II

• In Indonesia one of the basic requirements for a trademark registration is novelty. During the examination, the IP Office may reject the application if there are similar earlier registered trademarks.

• A trademark can be cancelled for non-use for 3 consecutive years after the registration date.

• In Indonesia it is advisable not to have simultaneous proceedings on a similar object since it could compromise one of the proceedings. Therefore, it is important have an accurate anticipated strategy and evaluate the convenience of which proceeding to start first, also in cost/benefit terms.

• In order to prove that a mark is well-known, it is necessary to provide sufficient evidence, such as proving that the trade mark is already registered in other countries, especially in developed countries such as, for example, USA, Europe, Japan or Canada.

• In some cases, private mediation is more effective than judicial proceedings (i.e. settlement agreements, which can also include a compensation for damages, the destruction of infringing goods…)

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Case Study III CAP CAKI TIGA (Indonesia)

• Wen Ken Co. Pte. Ltd, a Singapore company, produces the beverage “Cap Kaki Tiga” and registered its trade marks also in Indonesia.

• Russel Vince, a British citizen, finding that the brand’s logo resembled the

Isle of Man’s triskelion flag, filed a request of trade mark cancellation arguing that the mark contained, without authorization, a State symbol and that there was bad faith.

• In particular, Mr. Vince asked also for the recall from the market of all

products bearing such trade mark.

• The Central Jakarta Commercial Court, without investigating on the identity and authority of Mr. Vince, stated that all Wen Ken trade mark registrations for said mark were in bad faith and ordered their cancellation, affirming the similarity with the Isle of Man’s flag.

• However, the Court did not ordered to stop the use of such trade marks. The Supreme Court of Indonesia confirmed twice the Commercial Court decision.

Reference: https://www.merdeka.com/peristiwa/kalah-gugatan-merek-cap-kaki-tiga-tak-boleh-lagi-dipakai.html

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https://www.merdeka.com/peristiwa/kalah-gugatan-merek-cap-kaki-tiga-tak-boleh-lagi-dipakai.html




























FOCUS Case Study III

• In Indonesia a trademarks that consists in flags or contains any others State emblems or symbols cannot be registered as a trademark; if it is registered, it could be invalidated for bad faith.

• However, a trademark that contains a flag could still be used in commerce.

• Before registering a trademark, be aware of the national regulations and laws and verify if your sign represents an emblem or a symbol of a State.

• Avoid filing an application for the registration of a trademark containing symbols or emblems of States (like flags), not only in Indonesia but all over the world.

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TM and GIs IN INDONESIA

Trade marks: • The Indonesian Parliament approved Indonesia’s new Trademark Law on 27 October 2016, which became

effective on 26 November 2016. • Now it is possible to register as a trademark 3D signs, sound and holograms. • It is important to register a trade mark before entering the market, because bad-faith registrations are a

very common practice in Indonesia. • The owner of a well-know mark can apply to the Court in order to cancel a bad-faith registration, but it is

difficult to provide the necessary evidence; • A trademark can be cancelled due to a non-use for 3 consecutive years after the registration date. • The application for registration can be filed by the user or the licensor of the trade mark; foreign

applicants have to appoint a local attorney to file the application on their behalf. • The registration procedure takes about 36/42 months. • The protection for registered trade marks lasts for 10 years and can be renewed indefinitely every ten

years; the application for renewal have to be filed within 12 months before the expiry date. • Indonesia is part of the Paris Convention, it is possible claim the “priority date”. • Indonesia operates under a “first-to-file” system.


• The new law also accepts registrations for Geographical Indications (GIs) where such marks serve to indicate the origin of the goods, where such location has become known to be associated with such goods.

• A foreign GI has to be registered and/or acknowledged in its country of origin to be registered in Indonesia.

• Subjects who can apply for the registration are: institutions representing a group of people in the area of origin, an authorized institution or a group of consumers of those goods.

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Have you ever filed an application to register trademarks in Singapore?

1) Yes, one trademark

2) Yes, several trademarks

3) No

4) No, but I am considering doing it.

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Poll III

Case Study IV

NUTELLO/NUTELLA (Singapore)

• On August 2007, Sarika Connoisseur Café Pte Ltd launched a new espresso-drink called “NUTELLO”, which contained espresso, cocoa, milk and NUTELLA and this beverage was promoted as “An Espresso with lashing of Nutella…”.

• Ferrero S.P.A., owner of NUTELLA trademark, sued Sakira Café for trade mark

infringement.

• The High Court (HG) stated that there was a visual and aural similarity of the trademarks and that the goods were similar. Therefore, the Court affirmed the infringement and the dilution of the well-known mark Nutella trade mark as well as passing off.

• The Court of Appeal confirmed the HG decision and highlighted that Nutella is a highly

distinctive well-known mark and that NUTELLO did not diverged enough from the trade mark Nutella.

• Moreover, the CA confirmed the dilution by blurring, since there is a probability of damage or loss of the trademark’s distinctiveness and function.

• It was also stated that damage exists not only when there is a loss of money, but even

if the trademark owner loses future business opportunities. Reference: http://ipkomododragon.blogspot.it/2013/02/a-nutty-singapore-court-decision.html.

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http://ipkomododragon.blogspot.it/2013/02/a-nutty-singapore-court-decision.html





















FOCUS Case Study IV

• It is important to monitor the market and competitors’ behaviors through surveillance services and alike.

• The use of a sign identical or similar to an earlier trademark constitutes an infringement of a prior right according to TM Law in Singapore.

• Moreover, the common law “tort of passing off” protects trademarks, also those which are used but not registered, upon certain conditions: goodwill or good reputation of trademarks in Singapore, as well as misrepresentation and damage to trademarks’ reputation.

• It is possible to obtain a compensation for damages not only if there is an economic damage in terms of loss of money, but also in case of loss of future business opportunities.

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Case Study V • Nestlé had registered the two-finger and four-finger shapes of its Kit Kat bars as

trademarks in Singapore • Nestlé sued Petra, a company producing similar two-finger and four-finger

chocolate wafer bars, alleging that the two-finger and four-finger shapes trademarks were infringed by Petra’s products.

• Petra counterclaimed that Nestle’s mark was invalid due to lack of distinctiveness and argued that trademark protection should be prohibited based on the shapes achieving technical results. The Court of first instance allowed Petra’s counterclaims.

• The judges ruled that Nestle’s shapes lacked inherent distinctive character and

had not acquired distinctiveness through use. Nestlé had also made a claim for well-known trademark protection, but the court held that “marks which are unregistrable must necessarily be excluded from the special protective regime for well-known trademarks”.

• Before the Court of Appeal, Nestlé sought to overturn all of these rulings.

• The Court of Appeal however dismissed Nestlé’s appeal, holding that the marks

were devoid of any distinctive character and that a mark that has failed to meet the standards of distinctive character and inherent distinctiveness cannot enjoy protection purely because it has become well-known in Singapore.

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Reference: http://www.worldipreview.com/news/nestl-loses-kitkat-trademark-battle-in-singapore-12656

http://www.worldipreview.com/news/nestl-loses-kitkat-trademark-battle-in-singapore-12656
















Case Study VI

Singapore Application No. : T01/14770J Applicant : Société Des Produits Nestlé S.A. Date of application : 15 July 2001 Mark : 3D shape of packaging of the goods

Class 30: Coffee and coffee mixtures. Objection: Devoid of distinctive character. Decision: The mark is not acceptable as it is quite unlikely that the mark will be

recognized as a trade source. The packaging is one that the target sector of the public will see as signifying certain functionalities, for example, as a container for holding the coffee mixture, and not as an indication of its origin. There is no distinctive character in the packaging. The public is likely to recognize the applicant’s house mark, rather than the container as the trade mark. The Registrar took into consideration the fact that similar containers with a peel-off cover have been in use in the market for other products such as dairy creams, fruit jellies, instant noodles and ice-creams.

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Reference: https://www.ipos.gov.sg/Portals/0/about%20IP/trademark%20resources/Work%20Manual-Shape%20Marks%20Chapter.pdf

https://www.ipos.gov.sg/Portals/0/about IP/trademark resources/Work Manual-Shape Marks Chapter.pdf































FOCUS Case Studies V-VI

• In Singapore it is possible to register as trademarks all distinctive and graphically representable signs, included 3D signs, 3D shapes of a product or its packaging and any combination of said signs.

• Therefore, also a “shape” trademark has to distinguish the products of the owner from those of other companies; only a distinctive mark can be validly enforced and defended against infringement.

• If a trademark lacks of distinctive character, the fact that it is a well-known trademark doesn’t matter and the owner can not benefit of the protection provided for well-known trademarks.

• According to Art. 7 (3) of Singapore TM Law:

“A sign shall not be registered as a shape trade mark if it consists exclusively of :

(a) the shape which results from the nature of the goods themselves;

(b) the shape of goods which is necessary to obtain a technical result;

(c) the shape which gives substantial value to the goods.”

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TM and GIs in SINGAPORE

Trade marks:

• Singapore adopts a “first-to-file” system for IPRs • A trademark does not have necessarily to be in use before registration, although the applicant

has to make a declaration of “clear intention to use” the trademark, and must use that trademark in commerce within five years from registration or the trademark could be revoked for non-use.

• It is possible to register as trademarks also 3D signs and sounds. • The registration procedure takes about 6/9 months. • The protection for registered trademarks lasts for ten years and can be renewed indefinitely

every ten years.


• In Singapore, a GI is protected under the Geographical Indications Act and it is not necessary to file an application.

• GIs protected in a country member of the World Trade Organization, the Paris Convention or designated by the Government, are automatically protected in Singapore.

• According to the EU-Singapore FTA (2014), Singapore has agreed to set up a new register for GIs and a higher level of protection.

• In this regard, the Parliament adopted the Geographical Indications Bill (2014) that provides for a GIs Register, which has not yet been implemented.

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Watch outs and tips

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Start protecting your IPR before entering the market

Prepare a strategy to develop your IPR protection

Carry out your IP preliminary searches

Take care of your first filing, even the national one

Protect your word trade mark also in local script (translation or transliteration) into South-East Asian languages

Collect all documents concerning the use of the mark and create a database with all relevant materials

Monitor markets and competitors’ behaviors

Activate, through your IP attorney, a worldwide surveillance system

Monitor IP gazettes and legal actions

Verify the compliance of contracts providing the local legislation as applicable law



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Name: Mr. Elio De Tullio

Firm: De Tullio & Partners Location: Rome, Italy Email: [email protected]




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