On January 20, 2021, Laos published its Decision on the Management, Monitoring, Treatment, and Disposal of Polychlorinated Biphenyls (PCBs) in Transformers No. 5925/MONRE, which entered into force 15 days after its publication. The decision aims to provide guidelines on the management of PCBs used in electric transformers, and to reaffirm Laos’ international commitments under the Stockholm Convention on Persistent Organic Pollutants. Background The decision was developed by the Ministry of Natural Resources and Environment (MONRE). Under the local legal framework, the Law on Chemical Management (2016) places the MONRE in charge of monitoring and managing chemical waste in Laos. The Law on Environment Protection (2012) holds liable individuals and legal entities whose activities create poisonous, toxic, or dangerous waste, and directs local business operators producing such waste to store it and prevent any damage according to the relevant standards and regulations. However, the country’s laws and regulations have yet to provide these standards. On the international stage, Laos is a contracting member of the Stockholm Convention on Persistent Organic Pollutants, having ratified the convention on June 28, 2006. Parties to the convention are required to eliminate the use of PCBs in existing equipment by 2025 and ensure environmentally sound waste management of them by 2028. Laos thus issued the National Implementation Plan under the Stockholm Convention in March 2016 to phase out the country’s use of PCBs. The National Implementation Plan under the Stockholm Convention had observed that Laos had had no specific law or regulation for managing equipment or waste containing PCBs, and identified some electric transformers as a source of waste containing PCBs. Accordingly, the recent decision also provides that the local administration representing the MONRE in each province must cooperate with the administration representing the Ministry of Energy and Mines, Industry and Commerce, and other local administrations, state enterprises, and

Getting the Deal Through – Licensing 2021, published by Law Business Research (part of the Lexology network), provides a comprehensive guide to licensing in 18 countries around the world with contributions by several leading international law firms. Alan Adcock, partner and deputy director of intellectual property, Siraprapha Claassen, consultant, and Kasama Sriwatanakul, attorney-at-law from Tilleke & Gibbins’ Bangkok office, co-authored the Licensing 2021 Thailand chapter, which covers the following topics: Laws: Unfair Contract Terms Act, Trade Competition Act, pre-contractual disclosure, registration of international licensing, implied obligations, Civil and Commercial Code, Trademark Act, Patent Act, and Trade Secrets Act. Intellectual property issues: Paris Convention for the Protection of Industrial Property, PCT, TRIPs. Contesting the validity of licensor’s IP rights, invalidity and expiry of IP rights, evidence of use, licensing unregistered IP, opposability requirements, sub-licensing, co-owners, trade secrets, and copyright. Software licensing: perpetual licensing, import/export restrictions, improvements and modifications, user restrictions, and legal developments. Competition law: Trade Competition Act, specific restrictions on licensing agreements, and significant court decisions. Indemnification, disclaimers, and damages: prevalence and enforceability of indemnity provisions and contractual waivers of damages. Termination: conditions, indemnity, agency, and impact on sub-licenses. Bankruptcy: impact of licensee bankruptcy on licensor and vice versa, protection, and rights to terminate. Dispute resolution: governing law, arbitration, enforcement, injunctions, contractual waivers Royalties and payments: currency conversion, tax, remittance restrictions, and jurisdiction-specific payments. The Thailand chapter is available below as a PDF. Tilleke & Gibbins also contributed the Vietnam chapter to Licensing 2021. To browse all 18 jurisdictions covered by the guide, please visit the Getting the Deal Through website.

Attorneys from Tilleke & Gibbins’ office in Hanoi have written the Vietnam chapter for Getting the Deal Through – Licensing 2021, a comparative guide to licensing law and practice in 18 countries around the world. Licensing 2021 provides an overview of a wide range of licensing relationships, including licensing of copyrights, trademarks, and patents; software licenses; technology transfer agreements; and franchise agreements. The book also addresses issues of royalties and other payments, taxes, competition law, and termination of licensing relationships. The Vietnam chapter was authored by Linh Thi Mai Nguyen, Son Thai Hoang, and Chi Lan Dang of Tilleke & Gibbins’ trademark team, along with corporate and commercial attorney Tu Ngoc Trinh, who has extensive experience in franchising and competition law. The Vietnam chapter is available below as a PDF. Tilleke & Gibbins also contributed the Thailand chapter to Licensing 2021. To browse all 18 jurisdictions covered by the guide, please visit the Getting the Deal Through website.

On March 1, 2021, the renewal process for qualifying trademarks in Thailand got significantly faster, with the examination of applications and grant of a certificate of renewal now able to be completed within 45 minutes of a renewal application being filed. The expedited process incurs no additional official fee. To benefit from this, applications must comply with all of the fast-track conditions specified in the recent notification from the Department of Intellectual Property (DIP): The total number of goods or services must not exceed 30 items. No changes may have been made to the particulars of the registration. The application must be filed at the DIP by either the owner or an appointed attorney. In the latter case, the power of attorney must authorize the attorney to collect the certificate on the owner’s behalf. Fast-track examination must be requested when the renewal application is submitted. Tilleke & Gibbins has already submitted a test case with the DIP and can confirm that, when the above conditions are met, the DIP can complete and issue a certificate of renewal within 45 minutes of submitting the renewal application. This is a very positive step for the DIP which continues to become increasingly brand-owner friendly and business-oriented. It will also enable smoother and more seamless trademark-related transactions, such as trademark assignments and recordals of change of name or address, which can be complicated when attempted while a renewal is pending. For more details on this development, or on any aspect of securing intellectual property rights in Thailand, please contact Tilleke & Gibbins at [email protected].

E-commerce platforms have become some of the most significant marketplaces in Thailand, with millions of daily business transactions and huge numbers of online users. The increasing number of online shops operating on e-commerce platforms requires new techniques to be employed in online IP rights infringement cases. Both the private sector and the government have developed tools to enhance online IP enforcement, including ones using the latest legal technologies and artificial intelligence (AI). Many legal technologies and AI operations are still nascent and typically do not yet offer the best approach for online IP rights enforcement. For example, AI and other technologies available today are still unable to consistently differentiate between original and counterfeit products from the images and information displayed on the e-commerce platforms and the internet. Therefore, some of the most effective measures for online IP enforcement still involve manual online searches by experienced local investigators with deep understanding of the behaviors of local users (both sellers and buyers) and the ability to link relevant information across online platforms. Thailand’s Department of Intellectual Property (DIP), as the governmental office responsible for IP-related matters in Thailand, has initiated its new Memorandum of Understanding on the Protection of Intellectual Property Rights on the Internet. This memorandum of understanding (MOU) does not create additional rights for IP owners, but acts as a mechanism to gather all the relevant stakeholders to address issues related to online IP infringement in a unified, mutually agreeable manner. The signatories of the MOU fall into four categories: Governmental authorities: DIP, Department of Business Development, and Department of International Trade Promotion; E-commerce platform operators: Lazada, Shopee, and JD Central (the most popular e-commerce platforms in Thailand); IP rights holders: Particularly including trademark owners facing ongoing counterfeiting problems in Thailand; and Law firms. Although the MOU is not legally binding on the signatory parties, it demonstrates the

Vietnam has become a big player in the global fashion industry. Garments made in Vietnam now appear all over the world, especially in the U.S. and the EU. In this value chain, however, Vietnamese companies usually play the role of garment processors, fulfilling the orders of big brands for immediate export purposes. While the goods bearing the registered marks are made in Vietnam by local companies, the brand owners are often overseas or global corporations. As a brand owner can lose protection of its mark in Vietnam due to non-use, this situation leads to the question of what constitutes “use” of a mark when the mark-bearing goods are processed for export only, and not sold in the Vietnam market. Article 124.5 of Vietnam’s IP Law provides that: Use of a mark means the performance of the following acts: Affixing the protected mark on goods, packaging, business facilities, means of service provision, or transaction documents in business activities; Circulating, offering, advertising, or stocking for sale goods bearing the protected mark; Importing goods or services bearing the protected mark. At first glance, the above provision seems quite clear. While importing goods appears on the list, exporting goods is conspicuously absent, and therefore it is not an act of use. However, it is also clear that for the purpose of exporting, a product should go through a manufacturing or processing stage in which the mark will be physically affixed to the product or its packaging. For fashion goods, this could be in the form of a removable tag or package, a tag sewn onto the item, or a fundamental part of the garment’s design (such as a T-shirt emblazoned with a brand name, or a shoe featuring a distinctive logo). Then, the question becomes whether this act of affixing the mark on the goods or packaging in the manufacturing process

Myanmar, which is now more than halfway through the scheduled soft opening of its Intellectual Property Department (IPD) under the country’s New Trademark Law, is well on its way to the full realization of its plans for a modernized IP system operating on par with international standards. As the first of four IP-related laws passed in 2019, the ongoing implementation of the Trademark Law affects definitions of trademarks and types of trademark applications. Section 2 of the law defines a “mark” as “either a visible sign or a combination of signs, including one’s own names, alphabet letters, numbers, graphical representations, or compositions of color and tints to distinguish the goods or services of an enterprise from those of another enterprise. Within this scope, trademark, service mark, collective mark and certification mark are also included. The ‘series mark’ consists of a number of these marks, which resemble each other on the material particulars, but may differ in some aspect—for instance, a mark with different color variations. However, there is no specific definition of what makes up a series mark in the Trademark Law itself, and there has also not yet been any clear guidance on the issue. The Trademark Rules, which set the guidelines for the trademark application and registration procedures, are still in the process of being finalized, are expected to include information on the possibility of filing series marks under the soft opening period. On December 29 2020, the IPD held a workshop to clarify various issues, and informed attendees that applications containing more than one trademark in a single application are prohibited under the new system. However, this seemed to contradict the Ministry of Commerce’s Order No. 63/2020, which had declared that the refiling of old marks under the soft opening period of the new Trademark Law had to be

The Office of Insurance Commission (OIC) is seeking public comments on their recently released draft guidelines on Thailand’s insurance regulatory sandbox. Once enacted, the draft notification will replace the existing OIC insurance regulatory sandbox notification, aiming to broaden the OIC’s authority in order to erase difficulties in the project approval process that have arisen under the current notification. One major change included in this draft notification is that business operators are no longer allowed to conduct “own sandbox” testing. Unlike the notification currently in effect, the new draft notification also does not specify the criteria and procedures for a business operator to apply for a temporary allowance of non-compliance with non-material, test-obstructing requirements in a notification or order from the OIC or the registrar. Participants Eligible participants in the insurance regulatory sandbox—which include life and non-life insurance companies, life and non-life brokers, and other types of business operators with expertise in technology—must have appropriate capital, systems, personnel, and experience for the planned provision of service. Participants in the sandbox must establish measures to ensure that insured parties will receive sufficient information in relation to the project, and a remedial plan must be in place in case of damage arising from errors connected to the project. These measures are similar to those in the existing OIC notification, which requires that such measures must at least cover consumer protection, risk management, reporting obligations, and compliance with applicable laws. Project Requirements The draft notification reduces the number of eligible sandbox project types allowed under the existing OIC notification. When the draft notification is enacted, projects that risk regulatory incompliance, and projects that may adversely affect consumers, financial stability, or trust in an insurance company or the industry as a whole, will no longer be allowed to participate in the insurance regulatory sandbox. In addition, applicants to participate in the