On May 16, 2023, Myanmar’s Intellectual Property Department (IPD) announced an extension of one more month for submission of notarized appointment of representative forms (or “TM-2 forms”) and for payment of official filing fees for trademarks. The new deadline for payment and submission is June 30, 2023. The IPD had announced in April 2023 that fee payments and submission of notarized TM-2 forms for trademarks prior to the enforcement of the Trademark Law (i.e., from October 1, 2020, to April 2, 2023) had to be completed by May 31, 2023. However, technical issues have hindered the IPD’s online filing system, which has had to undergo maintenance procedures. The extension until June 30, 2023, gives mark owners more time to prepare the necessary notarized TM-2 forms for their mark applications filed prior to enforcement of the Trademark Law . For more information on the country’s new trademark system, or on any aspect of protecting intellectual property rights in Myanmar, please contact Tilleke & Gibbins at [email protected].

Southeast Asia’s remarkable growth as a destination for foreign investment—including a 42 percent increase in 2021, according to a joint ASEAN-UNCTAD report—has brought with it innovation as well as the desire to protect that innovation. Investors are increasingly seeking to patent the proprietary technology that is a crucial component of so many businesses today, and a burning question for patent applicants is whether artificial intelligence (AI) technology and software are patentable in Southeast Asia. The short answer is that it depends, as the patent laws in Southeast Asia are not uniform. Is it Patentable? While AI tools tend to be newer, the older and more familiar question is whether computer software is patentable, and many jurisdictions do have specific rules on this issue. Pure software, or software characterized only by source code, may not be patentable, but it can be protected under copyright laws. AI-related software may involve complex algorithms, datasets, and training methodologies that can be challenging to disclose in a manner that satisfies the enablement requirement in practice. Algorithms, mathematical methods, and abstract ideas are often considered non-patentable subject matter in many jurisdictions. While software implementing AI may involve innovative algorithms, securing patents for algorithms alone can be challenging in some jurisdictions. Also, the patent laws of Indonesia, Myanmar, Thailand, and Vietnam specifically list computer programs as unpatentable subject matter. However, a possible workaround would be to describe the software as connected to a tangible medium. This method could overcome an unpatentable subject matter rejection during substantive examination. Furthermore, in Indonesia, a computer program can be patentable if its characteristics (i.e., instructions) have a technical effect and function to solve a tangible or intangible problem. The most liberal of Southeast Asia’s patent regimes—Singapore’s—even addresses AI innovations. The country has a special fast-track scheme for examining AI patent

On April 26, 2023, the Vietnamese government issued Decree No. 17/2023/ND-CP detailing some articles and enforcement measures of the 2022 Intellectual Property Law with respect to copyright and related rights (Decree 17). Decree 17 took immediate effect upon issuance, and provides long-awaited, necessary guidance for implementation of the IP Law, which took effect on January 1, 2023. The official regulations set out significantly new requirements on copyright and related rights in comparison to the draft version of the decree circulated in 2022. Some of the most critical provisions include the following: Detailed Definitions of Terms Decree 17 provides detailed definitions of copyrightable subject-matters, including “literary and scientific works, textbooks, curricula, and other written works”; “lectures, speeches, and other talks”; “journalistic works”; “musical works”; “cinematographic works”; and others. Exceptions to Copyright Infringement Section 1 of Chapter III sets out the exceptions to copyright infringement, including, among others: Reasonable reproduction of part of a work using a copying device for scientific research, personal study, or non-commercial purposes. Using a work in official activities of state agencies. Using reasonable extracts/excerpts of a work. Using a work in library activities for non-commercial purposes Reasonable reproduction of part of a performance, audio recording, video recording, or broadcast. Enforcement Against Infringements The entire Chapter VI covers the protection of copyright and related rights to a very detailed extent, including: Presumption of copyright and related rights; Technological measures to protect rights; and The basis for determination of subjects entitled to copyright and related rights protection. The mechanisms to determine infringements and damages are clearly provided, including: Grounds for determining the nature and extent of infringement; Principles for the determination of damages; and The definition and calculation of mental loss, property damage, decline in income and profit, and loss of business opportunities. Decree 17 also adds a

When a company promotes its products or services, it will naturally use laudatory terms or phrases to describe their quality. However, in Vietnam, such use could constitute trademark infringement, as many terms with a descriptive or laudatory nature have been granted registration as trademarks, often without disclaimers. Examples include “Nuoc Mam Me Lam” (“Fish sauce made by mom”) under Reg. No. 392575 for fish sauce, “Drink it, Wear it” under Reg. No. 387444 for clothing retail services, and “Making Cancer History” under Reg. No. 388177 for healthcare services. Imagine a case where a hospital advertises that its cancer treatment services can help “make cancer history.” Would such advertisement be considered trademark infringement of the registered mark “Making Cancer History”? Fair use or infringement? Under the doctrine of descriptive fair use commonly adopted worldwide, a third party, even a direct competitor, may use another party’s descriptive trademark to describe its own products or services, even if such mark has acquired secondary meaning. However, that use can only be in a purely descriptive manner. Descriptive fair use requires that the mark being used actually describes a quality or attribute of the goods or services, rather than indicating the source. The descriptive words must also be used in the normal course of language. In addition, the mark must be used in the text portions of an advertisement and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used. To be nominative fair use, such use should accurately refer to a trademark owner or to goods or services and cannot be misleading or defamatory, or imply endorsement or sponsorship by a trademark owner. Vietnam does not have any detailed regulation on fair use of descriptive marks.