INTA Releases Report on Strengthening ASEAN Anticounterfeiting Enforcement Efforts

INTA recently published a research report that looks at current intellectual property (IP) enforcement efforts in Southeast Asia and provides 62 recommendations for governments in the ASEAN region and elsewhere that are seeking to bolster IP protection in their jurisdictions.

The report, entitled Research Report on the Best Practices to Initiate, Continue, or Revitalize IP Enforcement Efforts: A Focus on Trademark Anticounterfeiting, is written by former Director General of the IP Office of the Philippines, Ricardo Blancaflor. It focuses on Cambodia, Malaysia, the Philippines, Singapore, and Thailand.

The paper has been produced for INTA to promote improvements to IP protection in Southeast Asia. Members of INTA’s Anticounterfeiting Committee, Asia-Pacific Subcommittee reviewed and provided input on initial drafts.

In opening remarks at a virtual ceremony marking the report’s publication on December 14, INTA 2021 President Tiki Dare noted, “Mr. Blancaflor’s paper provides valuable insight into the best practices for IP enforcement across the region, showcasing specific initiatives across several ASEAN member states.  As ASEAN and the world recover from the pandemic, policy makers will be focusing on areas for sustainable, resilient growth. The best practices identified here will help.”

At the ceremony, Mr. Blancaflor said that his paper had been several years in the works and advised that IP legislation must keep up with technology and emerging issues such as e-commerce and the COVID pandemic. “Most of the time, legislators will be two steps behind criminal counterfeiters, if they are not proactive,” he said.

He noted as an example that IP legislation amendments in the Philippines is currently under consideration in Congress.

Among the recommendations outlined in the report, the top seven best practices are the following:

• First, countries should implement sound, pertinent legislation that properly disincentivizes infringement, such as by instituting high penalties.
• Second, a transparent, experienced, and efficient judicial system is key to successful enforcement efforts. The report explains that legislation lacks teeth if the judicial system is not sufficiently staffed with trained judges and prosecutors that can properly handle cases.
• Third, government should take a holistic approach, even when there are specialized IP enforcement agencies. No one agency can carry the burden alone, whether Customs at the border, or internally with police or administrative authorities. Forming a multi-agency body is essential to gather all the relevant skills and mandates to fight IP crime.
• Fourth, high-level public support will help prioritize efforts to protect IP. As noted in the research paper, the late King of Thailand, His Majesty King Bhumibol Adulyadej, took up the issue of IP, and was even awarded with the World Intellectual Property Association’s first Global Leader Award in 2007.
• Fifth, countries should link economic success to IP—in particular, to IP enforcement. Many countries in Southeast Asia do not conduct extensive research on the impact of IP on the economy, and, as a result, policy makers do not recognize the importance of IP.
• Sixth, technology and emerging issues need to be anticipated and addressed. E-commerce has been a major area of development for businesses but it also presents many serious problems for brand owners relating to the sale of counterfeit goods.
• Finally, putting all the pieces together, countries need to implement IP enforcement programs. Even where IP offices do not have a remit on enforcement, they can champion efforts on the enforcement of the rights they are registering and recognizing.

The launch ceremony concluded with a discussion by a panel of experts on the trends in IP protection, the various motivating factors for action on IP matters, and the implications of the report in their countries.

The panelists were Editha R. Hechanova, managing partner, Hechanova Bugay Vilchez & Andaya-Racadio (Philippines); Justisiari P. Kusumah, managing partner, K&K Advocates – Intellectual Property (Indonesia); Wiramrudee Mokkhavesa, partner, Tilleke & Gibbins (Thailand); and Yen Vu, principal and country manager, Rouse (Vietnam).

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.