Thailand changed its system for customs recordation and various other customs procedures when its Customs Notification No. 106/2565 on the Export, Import, and Transit of Trademark- and Copyright-Infringing Goods came into effect on July 29, 2022. The revamped system updates the process by which entrepreneurs and brand owners can work with the Customs Department to protect their intellectual property rights (IPRs) from cross-border trade in counterfeit and pirated goods. To support these changes, the Customs Department launched a new platform called the Thai Customs IPR Recordation System (TCIRs) in September 2022. Trademark or copyright owners (or their representatives) can file new customs recordation applications, make changes to information, and renew customs recordation applications via this platform. The filed information will be kept confidential in Thai Customs’ database and will be used as evidence in cases of seizure of counterfeit or pirated goods. The new platform allows submission of information on genuine goods and inspection methods in the form of images and PDF files, which will enhance the effectiveness of the goods verification process of the Customs Department. Customs Recordation through TCIRs Trademark or copyright owners (or their representatives) may file an application specifying information that customs officers can use to verify the authenticity of the goods being exported, imported, or transited through Thailand. The application can be filed with the Enforcement Division of the Customs Department. The information in the application will be kept for three years from the date of receipt (or for the remaining period of trademark or copyright protection, if less than three years). Renewals can be filed no later than 30 days before the expiry date. Any changes in information must be made with the Enforcement Division. Key Takeaways As the legislation has changed to mandate that customs recordation applications go directly to the Customs

On January 12, 2023, Myanmar’s Intellectual Property Department (IPD) announced that the country’s Trademark Law enacted in 2019 is set be enforced in March 2023. While an official notification specifying the effective date of the Trademark Law has not yet been issued, this significant announcement by the IPD indicates the impending implementation of the new trademark framework and alerts mark owners to make the necessary preparations to secure trademark protection in Myanmar under the new legal regime. The announcement confirms that trademark registrations, and the procedures for accepting payments, will commence once the Trademark Law enters into force (assuming there is no significant change from the IPD). Based on the Ministry of Commerce’s order (No. 63/2020) initiating the “soft opening” period, as well as this announcement from the IPD, it is expected that the fees for trademark registration will be issued soon, by a separate notification, before enforcement of the Trademark Law. Subsequently, applicants will be allowed to refile existing marks (recorded under Myanmar’s old system or used in the country), together with payment, up until officials announce the end of the IPD’s soft opening period (i.e., the “grand opening” of the IPD). During this time, existing marks can be refiled with the IPD either in person by the mark owner or online by an IPD-certified local representative. After the announcement of the fees and payment process for trademark registration, all mark owners who had previously filed their existing marks during the soft opening period must also pay the necessary fees for their applications. While subsequent announcements will provide details on exactly how to proceed, owners of marks that qualify to be filed during the IPD’s soft opening period should strongly consider refiling the marks with the IPD as soon as possible—if they have not done so already—to reserve

Experts from Tilleke & Gibbins’ intellectual property team have written the Vietnam chapter of Practical Law’s Intellectual Property Transactions Global Guide 2022, a high-level comparative overview of intellectual property laws and regulations across more than 30 jurisdictions. The Intellectual Property Transactions Global Guide focuses on business-related aspects of intellectual property, such as the value of intellectual assets in M&A transactions, and the licensing of IP portfolios. The topics covered include the following: IP assignment IP licensing Research and development collaborations IP audits IP aspects of M&A Lending and security interests Settlement agreements Employee and consultant agreements Key issues in IP transactions To read the Vietnam chapter, please visit the Practical Law website or click on the link below.

In early November 2022, a Thai appeals court overruled the Trademark Registrar’s decision and the Board of Trademarks’ ruling by upholding the registrability of an oil company’s trademark application for its branded service station layout. This is the latest word in a long-running dispute between ExxonMobil and the country’s Department of Intellectual Property (DIP), which had previously rejected the mark as indistinctive. ExxonMobil first filed applications in April 2015 for a trademark bearing a unique colorful drawing of the layout of a service station bearing its well-known registered “ESSO” mark in International Classes 4 and 35 in Thailand. However, the Thai Trademark Registrar refused to register the mark, arguing that the mark was devoid of inherent distinctiveness because the service station layout drawing is directly descriptive of the applied-for goods and services related to oil products. According to the Registrar, the public would not be able to distinguish between the goods and services bearing ExxonMobil’s mark and those bearing the marks of others. ExxonMobil appealed this refusal to the Board of Trademarks, which ultimately agreed that ExxonMobil’s marks are devoid of inherent distinctiveness. The Board explained that the dominant elements in the drawing consist of a common service station with fuel dispensers, which is directly related to the applied-for goods and services related to oil products. The Board also deemed that the submitted evidence was insufficient to prove that the mark had gained distinctiveness through use. ExxonMobil disagreed with these rulings and thus filed a civil complaint with the Intellectual Property and International Trade Court (IP&IT Court) to revoke the Registrar’s decisions and the Board’s rulings. The IP&IT Court examined the case and issued its judgment in favor of ExxonMobil, ruling that the marks are inherently distinctive. The Court noted that to consider a mark’s distinctiveness, it is crucial