kass ip exposé - december 2012

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IP expose INTELLECTUAL PROPERTY NEWS UPDATES The IP Experts Your Professional Guide in the Intellectual Property Maze SM www.kass.com.my INNOVATIONS DECIDE sm BY CARLA MONINTJA Don’t underestimate the value of a trademark DECEMBER 2012 HIGHLIGHTS Other Updates: Don’t Disregard Due Diligence: Banking Institution Infringes Patent Success story spotlight – K.H. Sim of Allstones Group Asia KDN: PQ/PP1505 (14079) (43) Don’t underestimate the value of a trademark Can you imagine a world where businesses had no trademarks or brands? Take a look around – what is it that gives businesses that magnetic pull that attracts consumers? The answer is the brand, and with it, the undeniable power of trademarks. For a simple example of this power in our daily life, consider this scenario: You are in the middle of nowhere and feeling parched; you enter a convenience store in dire Plagiarius Awards: Corporate Name and Shame need of something to quench your thirst and suddenly you are faced with a choice. Which one will it be – a bottle of drinking water with an internationally recognised trademark, or a bottle of water with a local trademark that is not as well known? If you asked me, I would definitely choose the famous one. While there is a sense of familiarity and attachment to the trademark, the more recognizable trademark also gives the product a guarantee of the quality of their products, so I know that it will be safe to consume without causing any adverse effects. Comparatively, the local drinking water might raise some doubts in my mind should I think of consuming it. Developing an image and creating goodwill for a trademark requires a lot of effort, time and cost. So before you invest your money to develop your business and your trademark, make sure you already legally own the trademark. How do you own the trademark? Just follow the procedures to file an application for a trademark. Once your trademark is registered, it is generally exclusively yours. However, this simple step is sometimes ignored or forgotten by trademark owners. A case in point would be the recent trademark battle in Indonesia between two local entrepreneurs. Edwin (the Defendant) is the director of PT. Maxistar Intermoda Indonesia, a textile company well known for producing good quality textiles. Edwin used the trademark “Maxima” to reflect the maximum quality of his textile products. From 1997 until 2005, Edwin built up the “Maxima” brand and reputation, with his efforts leading to increased sales of products bearing this brand all around Indonesia. However, there was something missing – he had not registered “Maxima” as a trademark as he was not aware of the importance of doing so. 1 pg Right about the time when Edwin‘s profits from the “Maxima” products were soaring, there was another party, Ng Jok Pin (the Plaintiff), who was also using the name “Maxima” for his textile products. He, too, used the name “Maxima” without filing for a trademark registration. When should Malaysian inventors choose Utility Innovation over a Patent? Fabrics designed to meet the needs of top executives often reflect class and luxury. Suitable for formal dress in a variety of business and social events, they are widely used by designers and as a textile for leading fashion brands. 2 pg Colour Wars 3 pg 4 pg

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The December 2012 issue of your go-to source for updates on Intellectual Property matters in South East Asia

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Page 1: KASS IP exposé - December 2012

IP exposeINTELLECTUAL PROPERTY NEWS UPDATES

The IP ExpertsYour Professional Guide in the Intellectual Property MazeSM

www.kass.com.my INNOVATIONS DECIDE sm

BY CARLA MONINTJA

Don’t underestimate the value of a trademark DECEMBER 2012HIGHLIGHTS

Other Updates:

Don’t Disregard Due Diligence: Banking Institution Infringes Patent

Success story spotlight –K.H. Sim of Allstones Group Asia

KDN: PQ/PP1505 (14079) (43)

Don’t underestimate the value of a trademark

Can you imagine a world where businesses had no trademarks or brands? Take a look around – what is it that gives businesses that magnetic pull that attracts consumers? The answer is the brand, and with it, the undeniable power of trademarks.

For a simple example of this power in our daily life, consider this scenario: You are in the middle of nowhere and feeling parched; you enter a convenience store in dire

Plagiarius Awards: Corporate Name and Shame

need of something to quench your thirst and suddenly you are faced with a choice. Which one will it be – a bottle of drinking water with an internationally recognised trademark, or a bottle of water with a local trademark that is not as well known? If you asked me, I would definitely choose the famous one. While there is a sense of familiarity and attachment to the trademark, the more recognizable trademark also gives the product a guarantee of the quality of their products, so I know that it will be safe to consume without causing any adverse effects. Comparatively, the local drinking water might raise some doubts in my mind should I think of consuming it.

Developing an image and creating goodwill for a trademark requires a lot of effort, time and cost. So before you invest your money to develop your business and your trademark, make sure you already legally own the trademark. How do you own the trademark? Just follow the procedures to file an application for a trademark. Once your trademark is registered, it is generally exclusively yours. However, this simple step is sometimes ignored or forgotten by trademark owners.

A case in point would be the recent trademark battle in Indonesia between two local entrepreneurs. Edwin (the Defendant) is the director of PT. Maxistar Intermoda Indonesia, a textile company well known for producing good quality textiles. Edwin used the trademark “Maxima” to reflect the maximum quality of his textile products. From 1997 until 2005, Edwin built up the “Maxima” brand and reputation, with his efforts leading to increased sales of products bearing this brand all around Indonesia. However, there was something missing – he had not registered “Maxima” as a trademark as he was not aware of the importance of doing so.

1pg

Right about the time when Edwin‘s profits from the “Maxima” products were soaring, there was another party, Ng Jok Pin (the Plaintiff), who was also using the name “Maxima” for his textile products. He, too, used the name “Maxima” without filing for a trademark registration.

When should Malaysian inventors choose Utility

Innovation over a Patent?

Fabrics designed to meet the needs of top executives often reflect class and luxury. Suitable for formal dress in a variety of business and social events, they are widely used by designers and as a textile for leading fashion brands.

2pg

Colour Wars

3pg

4pg

Page 2: KASS IP exposé - December 2012

DECEMBER ’12IP exposé

IP Exposé is published & printed by KASS International Sdn Bhd

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Note: The trademarks and images used in this newsletter belong to their respective owners. KASS does not claim any proprietary rights whatsoever; they are used solely for educational purposes.

P U B L I S H E R & P R I N T E R

This newsletter is intended only to provide an alert service on matters of concern or interest to readers and should not be treated as a legal advice on the issues discussed. For specific queries on IP matters, please contact us for further assistance.

Before Edwin could find out if “Maxifeel” would meet with the same success as “Maxima”, Ng, eager to protect his business interests, filed for a cancellation lawsuit against the “Maxifeel” trademark owned by Edwin, based on its similarity to the registered “Maxima” trademark.

After several sessions in Court, the panel of judges chaired by Judge Kartim Chaeruddin of the Jakarta Commercial Court decided on 13 June 2012 to cancel the registration of the “Maxifeel” trademark owned by Edwin. It was held that (i) the “Maxifeel” trademark had similarity in substance to the “Maxima” trademark, potentially misleading customers especially as both trademarks are registered in the same class, and (ii) the “Maxifeel” trademark was filed in bad faith.

It is the opinion of the author that, as the essence of the marks “Maxima” and “Maxifeel” is considerably different, the decision of the Commercial Court needs to be reviewed. Edwin and his lawyers* have filed a Cassation Appeal at the Supreme Court against the Commercial Court decision. If you would like more information about this case, please send us a note at [email protected].

* Information on the case courtesy of Suryomurcito & Co.

Yarn is a continuous length of spun interlocked fibres – a material which, through the weaving process, forms the basis of textiles

Colour WarsBY REBECCA JUNE CHONG

The “Maxifeel” trademark The “Maxima” trademark

Much has been said about the obsession women have with shoes, and how the right pair can do wonders for a woman’s image and self-esteem. While it is not uncommon for men to have a similar fascination with sneakers, it is nowhere near the extent of this mysterious connection between a woman and her shoes. With so much variety to choose from, it’s no surprise that there are women who own hundreds of pairs of shoes. So what do they look for when they shop for a pair? Apart from style, function, heel height and fit, one of the main factors women take into consideration when choosing their shoes is, of course, colour.

High fashion designers like Christian Louboutin recognise the significance and power of colours. The Louboutin brand is typically associated with impossible-to-wear stilettos with red-lacquered outsoles. This “flash of red” has become a distinctive and recognizable element of the brand, so much so that Louboutin filed a trademark application for the red sole and was granted protection in 2008.

In 2011, Louboutin filed a trademark infringement suit against another high fashion brand, Yves Saint Laurent, for using their “red sole” concept in their monochromatic red shoes. Louboutin sought an injunction against Yves Saint Laurent and claimed damages of at least USD 1million. The US District Judge rejected Louboutin’s claim based on the “depletion theory”, explaining that colours are limited in nature and by allowing colours to be monopolized by traders, soon enough it would lead to the colour “exhaustion or depletion”.

On the other hand, the US Court of Appeals agreed that Louboutin possessed valid trademark rights over the red sole as it had indeed acquired secondary meaning among consumers and had become distinctive of the brand, and subsequently rejected

Naturally, Edwin felt uncomfortable with the existence of the other “Maxima”. After several meetings with Ng, the latter agreed to discontinue his use of “Maxima”. Ng, however, was not about to back down so easily.

Unbeknownst to both of them, another party had, in fact, already registered the name “Maxima” under class 24 (for textiles). When Ng heard about this, he approached the owner of the trademark and asked for an assignment. The owner of the registered trademark agreed, and the “Maxima” trademark was assigned to Ng.

With this golden ticket on his side, Ng subsequently asked Edwin to discontinue using “Maxima”. Edwin, realising that he was in a weak position as he was not legally the owner of “Maxima”, agreed to stop using the “Maxima” trademark, and decided to create a new name, “Maxifeel” to replace “Maxima”. This time, Edwin had learnt his lesson and filed for the registration of “Maxifeel” in 2007.

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DECEMBER ’12IP exposé

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the District Court’s ruling that a single-colour trademark could not be valid in the fashion industry. The Appeals Court went on to state that “We see no reason, why a single-colour mark in the specific context of the fashion industry could not acquire secondary meaning – and therefore serve as a brand or source identifier – if it is used so consistently and prominently by a particular designer that it becomes a symbol.”

When should Malaysian inventors choose Utility Innovation over a Patent?

BY P. KANDIAH

It is common knowledge that to be eligible for the grant of a patent, an invention must satisfy three fundamental criteria, namely (i) the claimed features must be absolutely novel, (ii) the claimed features must involve an inventive step and (iii) the invention must be capable of industrial application. However, some inventions may not meet all these criteria. For example if the claimed features are novel but are obvious (not inventive), is the inventor eligible for any other form of proprietary right? The Malaysian Patents Act 1983 grants a Certificate for Utility Innovation (CUI) where the claimed features of the invention are novel but not inventive.

Utility Innovation means any innovation which creates a new product or process, or any new improvement of a known product or process which is capable of industrial application. The main difference between a patent and a CUI is that only one claim is allowed in a CUI whereas a patent can have any number of claims.

The duration of a patent is 20 years from the date of filing whereas the duration of a CUI is 10 years from the date of filing of the application. However, the owner of a CUI can, before the expiration of five years from the date of application, apply for an extension for an additional period of five years and before the expiration of the second period of five years apply for an extension for a further period of five years, giving a maximum period of possible protection of 15 years from the date of filing an application, subject to payment of annual annuity fees.

However, Louboutin’s red sole mark is entitled to limited trademark protection extending only to a red-lacquered outsole that contrasted with the colour of the rest of the shoe, but not to shoes that are monochromatically red. With that, Yves Saint Laurent can continue to produce monochromatic shoes with red outsoles, as it has done since the 1970s, effectively making this a win-win situation!

In Malaysia, colours and other non-traditional marks (NTMs) such as sounds, smells, and textures are not registrable yet, but with the globalization of the marketplace and in turn, of brands, we can look forward to the inclusion of the protection of NTMs in the soon-to-be amended Trade Marks Act 1976, thus bringing it into substantive conformity with international practices.

The red sole has become a distinctive and recognizable element of the Louboutin brand

Because of the less stringent requirements for a CUI, it is easier to obtain a CUI rather than a patent. Accordingly it is easier to defend and attack the validity of a CUI as compared to defending a patent. The only setback is the limitation of the number of claims. In a patent, there would be different dependent claims directed to different embodiments of the invention or on different important features of the invention. Whereas in a CUI, as only one claim is allowed, the inventor has to often claim the significant features that are likely to be incorporated in the product that will be commercialized.

Although it is possible to file for a patent and a CUI simultaneously, only a patent or a CUI will be granted for the same invention. It is also possible to convert a patent application into an application for a CUI during the patent prosecution process and vice versa. In practice, this election to convert is done after receiving the Substantive Examination report.

The procedure to apply for a CUI is the same as the process for the application of a patent. A UI application can be the originating application for an international patent application under the PCT route or Paris Convention. National phase application under the PCT route can be filed as a UI application under PCT Regulations.

Malaysian inventors should carefully consider obtaining a CUI if they or their advisors are of the view that the innovative feature, though novel, may not be inventive, instead of totally abandoning the idea of obtaining any form of proprietor right. At least the CUI would act as a strong deterrent against any would-be infringers.

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4 www.kass.com.my INNOVATIONS DECIDE sm

Doug Coupland, a Canadian writer, famously said, “You can’t fake creativity, competence, or sexual arousal.” Clearly the man has never been married, because husbands are good at faking the first two and wives are masters at the third. These days it’s really quite easy to fake just about anything. Just go to any night market in any Asian country and chances are you’ll be a witness to all manner of intellectual property (IP) infringements.

In a bid to inform the public about the scourge of counterfeit goods, Action Plagiarius was founded in 1977 to highlight the negative impact that the counterfeit industry has on the economy and also on small companies and designers. Since its founding, Action Plagiarius has bestowed the tongue-in-cheek Plagiarius Awards to companies which were found to be guilty of making the most flagrant design imitations. Every year the awards would name and shame those counterfeiters and copycats during an international press conference at the “Ambiente” trade fair in Frankfurt, Germany. It’s no surprise that none of the winners were ever present to collect the award, a black garden gnome with its nose painted gold (a pun on the German saying "to earn oneself a gold nose", referring to the act of earning oneself a lot of money by the illicit trade of counterfeiting).

This year the Plagarius Awards were awarded to 10 products chosen by an international panel of experts consisting of a lawyer, a patent judge, a police chief and several Managing Directors of high profile companies. The top three prizes were awarded to the following products:

Plagiarius Awards: Corporate Name and Shame

BY VINCENT TEH

Although the Awards were originally created by Professor Rido Busse to shame a Japanese company that had copied products he designed for a German company and sold them at a lower price, the award winners nowadays are mostly Chinese manufacturers (8 out of 10 for this year’s awards). With so many of the world’s products being manufactured in China, it is not hard to see why China has become the counterfeit capital of the world. However, with companies outsourcing their production to developing countries where IP rights and enforcement have a negligible presence, plagiarism and counterfeiting has become a global epidemic, and China is by no means the only country where imitation is rife. Other developing countries like India, Brazil and Thailand are experiencing the same problems too. It’s ironic that in a recent trip to Bangkok’s night market (famous for its knockoffs) I saw a T-shirt with the phrase “You’re as fake as the bag you’re carrying” printed in bold.

On a more serious note, the counterfeit industry has become so extensive that it is found to take up 10% of the world’s commerce. It has become a serious social and economic problem, causing an annual world-wide economic loss of RM 800 – 1,200 billion, as well as adding 200,000 job losses to international unemployment figures. It has also come to light that many counterfeiting rackets are controlled by crime syndicates that also deal in narcotics, weapons and human trafficking, among others. If the current trend of corporate outsourcing is to continue, and if the authorities do not take a hard stance on this matter, it is projected that the counterfeit industry will continue to grow in the years to come, followed by a host of other ancillary social problems. “If I register my IP rights, can I stop people from copying my

1st Prize Lightweight Forged Wheel "AC Schnitzer Type V"

2nd Prize Salad Making System "Salad Chef"

3rd Prize Fog Generator for Mosquito and Pest Control

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5www.kass.com.myINNOVATIONS DECIDE sm

BY MOHAGANESH VELAUTHAM

Don’t Disregard Due Diligence: Banking Institution Infringes Patent

In today’s increasingly connected and globalised world, the search for potential markets by companies in both developed and developing economies has boosted international trade at a tremendous rate. In a bid to grab a bigger chunk of the global market, traveling for business is becoming more and more commonplace.

In addition to that, the emergence of low cost no-frills airlines and air transport vehicles with larger passenger capacity has led to an increase in international travel, foreign exchange transactions, and a dependency on payment cards which include credit cards, charge cards and debit cards. Individuals traveling across borders usually find it convenient and safer to utilize these cards for purchases made during their stay in another country, doing away with the large amounts of converted currency needed and consequently minimizing the risk of losing money due to theft or negligence.

The complication with transactions via payment cards arises due to the rapidly fluctuating nature of foreign exchange rates. Banking institutions typically do not provide the computation of the exact exchange rate at the point of sale in relation to a merchant transaction, possibly causing the card-holder to be shortchanged. This loss, if accrued over time for multiple payment transactions can result in a substantial sum of money.

Against this backdrop, it is evident that there is a need for a system that provides for the automatic determination of the operating currency to process a transaction made with a payment card. Indeed such a solution has already been conceived and what’s more, it happens to be the subject of a recent legal dispute between two companies, namely, Main-Line Corporate Holdings Ltd. (“Main-Line”), a company incorporated in Ireland and DBS Bank Ltd. (“DBS Bank”), a company incorporated in Singapore.

products?” – this is a question many of our clients have asked. The truth of the matter is, there will always be copycats out there who are more than willing to get a free ride on your expense and hard work, with or without registration. However, you can think of IP registration as a pack of condoms – I'd rather have one and not need it, than need it and not have one. Without registration, you may find that prosecuting the wrongdoer is an uphill battle, or worst, you may not even be able to prosecute them.

Coming back to the Awards – does it work? Well yes, to a certain extent. While Action Plagarius has not the ability to close down the factories manufacturing these imitations, the Awards are able to put those manufacturers and distributors

in the limelight. Most of the time this corporate name and shame is enough to bring the guilty parties to the discussion table with the original IP owners. And to date most of the guilty parties have undertaken to stop producing or selling the imitations. A small victory in the battle against counterfeiting.

The infamous gnome – a symbol of Action Plagiarius’ dedication to exposing fakes

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DECEMBER ’12IP exposé

Sometime in December 2008, Main-Line became aware that DBS Bank was providing dynamic currency conversion services to its participating merchants, which appeared to be identical to what was claimed in a Singapore Patent owned by Main-Line. That patent, entitled “Dynamic Currency Conversion for Card Payment Systems”, was filed in Singapore on 12 July 1999 and was subsequently granted by the Intellectual Property Office of Singapore (IPOS) on 30 June 2003 as Singapore Patent No. 86037 (referred to hereinafter as “the Patent”).

The patented system owned by Main-Line enables a cardholder to pay for goods and services offered by a merchant abroad in the billing currency of the payment card. In other words, the cardholder just needs to swipe his/her payment card, and the system identifies and presents the operating or billing currency of the payment card to the cardholder. This automatic conversion to a card’s billing currency consequently enables an individual to make payment for goods or services abroad in either the card’s operating currency or the currency of the merchant in that particular country.

On 4 June 2009, Main-Line initiated legal proceedings against DBS Bank, alleging that DBS Bank had infringed the Patent by offering for use to the public, for a small fee, a system that determines the operating currency of a particular payment card and offers the cardholder the choice of either making payment in the operating currency of the payment card or in the merchant’s billing currency. The system, similar to the one claimed in the Patent, further provides for automatic currency conversion at the point of sale. Here, DBS Bank had entered into a Multi-Currency Conversion Services Agreement (“MCCS Agreement”) with E-Clearing Singapore Pte. Ltd. (“ECS”), which was engaged to provide, among others, an automatic currency detection service using the “Monex System” via terminals located at the premises of merchants acquired by DBS Bank. The “Monex System” was a system for dynamic currency conversion that appeared to be identical to the system claimed by the Patent. According to DBS Bank, the “Monex System” provided by the Monex Group (Singapore) Pte. Ltd, was apparently in use in Europe prior to the priority date of the Patent.

In its submissions, DBS Bank argued that Main-Line failed to show how the “Monex System” used the essential integers of the Patent. DBS Bank further asserted that it was ECS, and not them, that used or offered the “Monex System” for use, pursuant to a license obtained from Monex. DBS Bank maintained that it was not aware that use of the “Monex System” would infringe the Patent, as it did not know what the Patent claimed. DBS Bank also claimed that the Patent was invalid and tried to take advantage of the fact that Main-Line’s European Patent No. EP-B-1018711 was revoked on the grounds of added subject matter and lack of inventive step, among other things, and claimed priority from the same Irish patent that was referred to in the Patent.

Main-Line, on the other hand, argued that the Patent was valid despite the revocation of their European patent. The judge concurred, and held that the Patent was novel as at the priority date, involved an inventive step and did not include additional subject matter. Main-Line further alleged that DBS Bank had infringed the Patent due to the fact that the latter had used or offered for use the infringing “Monex System” while having in possession knowledge of how the “Monex System” worked.

In relation to the infringement of the Patent by DBS Bank, the judge found that the “Monex System” did indeed infringe the Patent based on evidence provided by Main-Line. Moreover, the evidence clearly showed that the “Monex System” offered for use by DBS Bank to its merchants appeared to cover the essential integers in the claims of the Patent. Regarding the allegation by DBS Bank that Main-Line failed to show how the former used or offered for use the infringing “Monex System”, the judge opined that Main-Line had indeed successfully shown that DBS Bank were offering for use the infringing “Monex System”, evidenced by the fact that pursuant to the MCCS agreement, DBS Bank, as the acquiring bank, were the owners of the payment card transactions at all times. Finally, on the allegation that DBS Bank were unaware that use of the “Monex System” would infringe the Patent, the judge found that it was indeed aware of the Patent, but had failed to exercise due diligence.

In view of the above, Main-Line’s patent was found to be valid and infringed upon by DBS Bank. Had DBS Bank exercised due diligence in the first instance, upon being aware of the Patent, it would not have found itself in the position of having to pay Main-Line for damages. On top of that, it could have avoided the barren labor and time expended at the courts, not to mention the costs of litigation.

6 www.kass.com.my INNOVATIONS DECIDE sm

Credit cards allow travellers to make purchases in foreign countries without needing to carry around large wads of converted cash

Page 7: KASS IP exposé - December 2012

Success story spotlight K.H. Sim, Chairman and Group CEO, Allstones Group Asia

value held by its brands (i.e. Allstones, Bluestone, Taragon, Redstone and Blackstone), especially in the property market in this region, and noted that, “We have enjoyed a good mix of both local and international investors, so it was important that we differentiate ourselves. In dealing with and partnering foreign investors, we have to benchmark ourselves against international standards.” Mr. Sim discloses that, “Allstones recently went into a co-existence agreement with a US financial giant as one of our brands shared a similar name with that group, evidencing that the US financial giant recognised us, our experience, track record and ultimately our brand”.

To assist them in properly securing and managing their trademark rights, Allstones found a suitable partner in KASS, who were chosen based on “its

long-standing reputation and success in Intellectual Property Rights and the key people attending to their needs”.

Mr. Sim’s parting words to those eager to follow in his footsteps was this: “In registering trademarks, companies have to recognise the value of doing so and continue to create value and quality in their products and/or services, not just doing it for the sake of embarking on the exercise. In today’s global business environment, continuous improvements in your products and services will create value for your brand, and it is important to register your trademarks early on to ensure that your brand name is safeguarded and protected.” With his keen business sense and determined mindset, Allstones is set to soar to greater heights, and we look forward to supporting Mr. Sim on this journey.

Mr. K.H. Sim, a property development veteran of over 20 years, is the current Chairman and Group CEO of Allstones Group Asia. Established in 2000, Allstones’ business activities focus on property development, investment and real estate management services within South East Asia. Following its initial success, the company has since embarked on residential, commercial, hotel and retail developments, including special situation projects such as its current mall refurbishment JV with a world-renowned foreign investor and fund manager, and is working with a licensed fund manager in Malaysia to set up the first property fund under the scrutiny of the Securities Commission.

With several successfully completed projects within Malaysia under its belt, Allstones has also been involved in an advisory capacity in some projects in Thailand. “Our Taragon brand, which encompasses Taragon Mont Kiara, Taragon Puteri Kemensah, Taragon Puteri YKS, Taragon Puteri Cheras, Taragon Puteri Bintang, and most recently, Taragon Kelana, is well known locally and regionally,” Mr. Sim shared, as testament to the brand’s strength.

The increased recognition of its brands also meant that there was a need to enhance their reputation and protect the brands locally and internationally. Mr. Sim adds that Allstones has always been aware of the

Around the region in an IP minute

“Kedai Komunis” owner to face the music over copyright infringement

In what has been said to be Brunei’s first ever copyright infringement case, Yong Teck Sang – owner of Yajuta Co. or “Kedai Komunis”, the largest pirated CD and DVD emporium in the country – has been sentenced to 6 weeks in prison on two counts of copyright violation against Suria Records Sdn Bhd (Malaysia) for selling counterfeit video and music CDs of Malaysian songstress Siti Nurhaliza's Hari Raya songs in 2009.

Tan Ngiap Foo, CEO of the Recording Industry Association of Malaysia, a trade association tasked with building public awareness on copyright in the music recording and distribution industry in Malaysia and Brunei, was present at the trial and testified that Yong had ignored all cease and desist letters sent to Yajuta to stop the sale of unlicensed music recordings. Yajuta had continued to keep its doors open despite the numerous raids on the premises over the years and being repeatedly shut down by authorities.

The scale of Yong’s counterfeit business was such that reports have partly attributed Brunei’s presence on the US Trade Representative’s watch list in the last 3 years to the expansion of Yajuta.

Yong has appealed against the Intermediate Court ruling and is currently released on

BRUNEITHAILAND5 million baht worth of counterfeit Levi’s goods seized

Representatives of Levi Strauss & Co. recently filed a complaint with Thailand’s Department of Special Investigation (DSI) and Office of Intellectual Property Litigation (Consumer Protection Board) regarding the continued manufacture and trade of fake Levi’s products in the market. Further investigation resulted in a raid on three houses in the Bangsakor, Bang Bua Thong and Sai Noi districts of the Nonthaburi province, where a total of 3,954 pairs of jeans bearing fake Levi's labels and worth over five million baht were seized. The owner of the counterfeit operation has turned himself in.

Read more at http://www.bangkokpost.com

CAMBODIA

a court bail of 3,000 Brunei Dollars.

Read more at http://www.bt.com.bn

Record high counterfeit drug haul short-lived

Cambodian police experienced an unprecedented two weeks of record breaking counterfeit drug busts recently.

The first haul, which resulted in the confiscation of two tonnes of counterfeit medication, was the largest drug bust in Cambodian history. Here, a drugstore owner from Phnom Penh was arrested after a 9-day surveillance of his illicit activities, where he was found to be trafficking 42 different varieties of expired, sub-standard, and fake drugs.

Just over a week later, the Anti-Economic Crime Department of the Interior Ministry and the Department of Health, in a joint operation, raided two warehouses in the Chamkarmon district of Phnom Penh following a tip and a 2-night stakeout, and seized three tonnes of fake and expired medicines.

Read more at http://www.phnompenhpost.com

“The value of registering our trademarks is not an immediate effect, but I believe it to be of a long

term benefit. It is about creating recognition and ensuring that the projects and services provided

by the Allstones brands stand for a certain international standard and quality.”

“ ”

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DECEMBER ’12IP exposé

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SAWADEE KRUP: KASS goes to Koh Samui!

In this edition of KASS IP exposé, we look at the most prehistoric, most timid, most random and most menacing trademarks published in the past issues of our Government Gazettes. Check out which marks came out tops:

Welcome to the KASS family!

Wrap Up of Business Fundamentals Series!

Merry Christmas and a Happy 2013!!

We’ve finally concluded our KASS Business Fundamentals Series for the year and have taken quite a ride in the process, covering everything from making money with IP to managing trade secrets to knowing the role of trademarks in franchises and more.

We’d like to express our warmest thanks to those who joined us and hope that you found the sessions useful and obtained tips that were practical in your business strategies. For those who missed out on our talks for this year, keep your eyes peeled for next year’s series!

The KASS team recently welcomed three additions to our Trademarks and Industrial Designs Division – let’s say hello to Annette Wong, Vincent Teh and Rebecca Chong!

Trademark No. 2011015606Services: Services dealing with waste; sanitation and soil decontamination; composting; waste treatment; slurry treatment; water purification (Class 40)Owner: ARCADIS N.V

Most Prehistoric

Trademark No. 2011021653Services: Instruction and training in martial arts; teaching in chinese martial arts; organisation of sporting events; providing facilities of sport events (Class 41)Owner: CHOO KWOK YIN

Most Menacing

Trademark No. 9011817Goods: Leather and imitations of leather; animal skins; trunks and traveling bags; whips, harness and saddlery; handbags; briefcases; coin purses; key cases; card cases; umbrellas; walking sticks; etc. (Class 18)Owner: STELLA LUNA SOL LIMITED

Most Random

Trademark No. 09050562Goods: Carbonated drinks (refreshing beverages); non-alcoholic fruit juice beverages; whey beverages (Class 32)Owner: KABUSHIKI KAISHA MARY CHOCOLATE COMPANY (MARY CHOCOLATE CO. LTD.)

Most Timid

2012 HAS BEEN AN EVENTFUL YEAR, AND ONE THAT WE HOPE WILL END ON A JOYFUL AND OPTIMISTIC NOTE

FOR ALL! WE WOULD LIKE TO TAKE THIS OPPORTUNITY TO WISH EVERYONE A WONDERFUL

AND SAFE HOLIDAY SEASON AND A BIGGER AND BETTER YEAR AHEAD.

TO THOSE CELEBRATING CHRISTMAS, WE WISH YOU AND YOUR LOVED ONES MANY BLESSINGS AND

PLENTY OF GOOD CHEER DURING THIS SPECIAL TIME OF THE YEAR.

Annette graduated with an LL.B. (Hons) from the University of Bristol, and has previously worked with a major

international oil, gas and chemicals company and a human capital consultancy firm. She handles searches, registration

and prosecution of trademarks and industrial designs and provides advice on copyright matters. When not hard at work, she loves jungle-trekking, racquet games, reading, swimming,

cooking and watching Korean dramas and movies.

Upon graduating with an LL.B. (Hons) from the University of Nottingham, Vincent immersed himself in the world of

IP, having managed the overseas trademark department at an IP firm prior to joining KASS. At KASS, he advises clients

on trademark, industrial design and copyright issues, and assists in the administration of the trademark team.

In his free time, Vincent indulges in his passion for sports, photography, music, reading and traveling.

Rebecca received her LL.B. (Hons) from the University of London. Coming from an IP background, she assists clients with trademark, industrial design and copyright issues. She enjoys dancing, music and art (face and body painting) in her spare time.

The beautiful island of Koh Samui was the charming setting of our recent KASS

trip. With so much to do and see on and off the island, it was a perfect location

for a well-needed break. We were treated to stunning white sandy beaches

and gorgeous sunsets, and were charmed by the locals, scrumptious food, wide array of shops, emerald

green jungles, peaceful temples and the Thai culture in general.

It was a memorable experience for the KASS team, which left many of us itching

to visit Koh Samui again. But until then, Sawadee Krup!