Lawyers at a regional update session yesterday considered the trademark woes of a fictional business, Lami, which had grown from being a small T-shirt-making operation endorsed by the star of a California-based TV show about surfers, to a company that makes cufflinks, shirts and ties—as worn by Ditt in a career-reviving show about Wall Street traders.
Moderator Ravi Ravindran of Ravindran Associates explained how the company had registered its mark around the world in the 1970s for T-shirts and that the registrations had been maintained by a diligent trade mark attorney. Unfortunately the attorney had not been instructed to advise the company on its decision to refresh its mark, and consequently the updated version of the Lami mark on its new products had not been registered.
After the company’s CEO discovered fake versions of its products on sale in Phuket during a holiday in Thailand, he ordered Joe Blow, the company’s lawyer, to stop the counterfeits. But investigations revealed fakes on sale not just in Thailand but across southeast Asia—in part due to the cult status of Crad Ditt in the region.
Nettaya Warncke of Domnern Somgiat and Boonman Law Office Ltd said that civil action in Thailand could cost far more than the company would get back in damages and that it was unclear whether criminal law provisions could be used to protect marks on goods for which they are not registered: “It’s a complicated area of the law and the police don’t like complications,” she said. The scenario that would help Lami most, said Warncke, would be if Blow discovered the counterfeiters using the Lami mark on T-shirts, for which it does have a registered mark. If so, they could ask the police to conduct a raid, allowing officers to seize the rest of the knock-off products.
Barry Yen of SKYS in Hong Kong outlined the rules in Hong Kong and Singapore, explaining that their common law systems would require Lami to produce plenty of evidence that its mark is well known if it wants to take action under passing-off provisions. He added that Lami may be able to assert copyright law, and explained how Hong Kong Customs officials can help in the fight against fakes.
Kenneth McInnes of Hodgkinson McInnes Patents in Australia had some advice for Joe Blow about the rules in his home country and in Indonesia—a country with a population of some 250 million people, making it one of the most important markets in the region.
“In theory Indonesia has TRIPs-compliant laws that should do the businesses, but in reality that’s not the case,” he said. “Border protection is not very effective. It’s better than it was 15 years ago but it’s up to IP owners to take self-help measures.”
McInnes advised Blow to take a pragmatic, commercial approach to tackling counterfeits in the country, given the high number of small players, the practical difficulties of bringing a civil action and corruption within enforcement agencies.
“Lami’s best option will be to wallpaper retailers with warning letters,” he said.