On May 4, 2024, the Vietnamese government issued Decree No. 46/2024/ND-CP (“Decree 46”) amending and supplementing certain articles of Decree No. 99/2013/ND-CP dated August 29, 2013, on administrative sanctions in industrial property, as amended and supplemented in 2021 (“Decree 99”). Decree 46, which will come into force on July 1, 2024, is designed to bring Decree 99 in line with the amended IP Law of 2022. Some of the notable amendments of Decree 46 are discussed below. New Infringing Acts Decree 46 added the following new infringing acts subject to sanctions, which had not been set out in the former decree: Use of patents, utility solutions, layout designs, or industrial designs without paying compensation according to the provisions on temporary rights specified in Article 131 of the amended IP Law. Accepting a trademark license not in the form of a written contract in the case of using the licensed trademark on goods or packaging. Failure to notify clients of costs, charges, and fees related to procedures for establishing and protecting industrial property rights. Deceiving clients in the course of entering into and performing industrial property representative service contracts, but not to the extent of criminal prosecution, or forcing customers to enter into and perform industrial property representative service contracts. Although these acts are not common occurrences, it is nevertheless important to have clear regulations in order to ensure consistency with the amended IP Law and overcome difficulties and obstacles if such acts are committed in practice. Amendments and Supplements Decree 46 adopted amendments and supplements to main sanctions, additional sanctions, and remedial measures, specifically: The monetary fine imposed for violations against trade secrets is VND 50 million to VND 100 million (approx. USD 2,000 – USD 4,000), a large increase compared to the VND 5 million to VND 15

On May 1, 2024, Myanmar’s Intellectual Property Department (IPD) issued its first publication of trademark applications under the country’s 2019 Trademark Law. Parties are now able to oppose any of the applied-for marks in the publication, which is accessible from the IPD’s website, in accordance with stipulations of Myanmar law. This is a substantial development showing progress toward the registration of marks under the Trademark Law. The online publication of the applications provides the details of each mark, applicant, and representative. In addition, it discloses relevant information such as disclaimers, color claims, mark translations or transliterations, applicable priority dates, as well as specifications of goods and services under the Nice Classification. Any person (individual or legal entity) can file an opposition against an applied-for mark within 60 days of publication by citing significant absolute or relative grounds as specified in the relevant sections of the Trademark Law. Oppositions must use the official form specified in the Trademark Rules, and the filing fee is MMK 150,000 per mark (regardless of the number of classes) plus a MMK 300 bank charge. Anyone, including interested parties or their local representatives, can file the opposition at the IPD. If an opposition is not filed within the stipulated 60-day period, the IPD will proceed with the trademark registration without conducting any substantive examination for similarity or priority. Thus, mark owners, rights holders, and other interested parties should closely monitor the IPD’s publication of applied-for marks so they can take any necessary actions and potentially file oppositions to protect their rights and interests. There has not yet been any official announcement on how often these publications will be issued. For more information on the IPD’s mark publication activities, or on any aspect of protecting intellectual property in Myanmar, please contact Tilleke & Gibbins at [email protected].

Trademark disputes in Thailand have undergone a significant transformation with the recent implementation of streamlined procedures aimed at expediting legal proceedings. This article explores the traditional process for resolving noncomplex trademark cases and introduces the latest regulatory amendments designed to enhance efficiency within the Thai legal framework. Traditional Process Overview The trademark registration process in Thailand involves several steps, including filing, examination, and granting registration. If the trademark registrar rejects an application on substantive grounds, applicants can appeal to the Board of Trademarks. If the board upholds the registrar’s decision, applicants can then pursue a civil suit with the Central Intellectual Property and International Trade Court (IP&IT Court) to revoke the trademark registrar’s and the board’s orders. Previous Regulations and Practice Historically, civil cases concerning trademark registrations followed standard procedures outlined in Thailand’s Civil Procedure Code, with specific adaptations for intellectual property matters under the Act for the Establishment of and Procedure for Intellectual Property and International Trade Court B.E. 2539 (1996). Proceedings entailed various stages, including settlement of issues, evidence hearing, and judgment hearing, culminating in the opportunity for appeal. New Regulations and Practice In 2023, a pivotal development emerged with the issuance of Regulation for Intellectual Property and International Trade Cases B.E. 2566 (2023). This regulatory update introduced section 18, which deals with cases related to the revocation or appeal of Board of Trademarks decisions, such as those concerning trademark nondistinctiveness or opposition cases against Thailand’s Department of Intellectual Property. Section 18 grants the IP&IT Court the authority to order parties to submit documents and evidence without the need for witness examination, thereby streamlining proceedings. Below is a comparison of the trademark procedures for cases related to the revocation or appeal of Board of Trademarks decisions: Traditional Approach Streamlined Approach Implementation and Implications In practice, the implementation

Intellectual property rights holders pursuing legal actions in Vietnam have faced various challenges related to document formality in recent years. For example, in two different disputes at the Ho Chi Minh City Court, we have seen the judge request the claimants to re-prepare the civil dossier due to a lack of documentation proving the authorization of the signer—despite the fact that the cases had been ongoing for long time. Meanwhile, many domain names have been unable to be registered and transferred in recent months. Third-party representatives cannot handle the work as they normally would, as Vietnam’s domain name authority has required all documents to be signed by the domain name holders themselves, instead of the law firms representing them. Such demands have created unnecessary complexities and obstacles for IP holders seeking to protect their rights in Vietnam. Legal Formalities in the Court System Vietnam’s judicial landscape presents unique hurdles for IP holders to enforce their rights. One significant challenge is the requirement for the claimant’s legal representative (typically the CEO/president), as explicitly displayed on the company’s business license, to sign all documents related to a lawsuit. This requirement clashes with the operational practices of many foreign companies, where multiple individuals may have the authority to represent the company. It is extremely impractical, especially in a large multinational conglomerate, for the CEO/president to personally execute all documents and transactions. Instead, authorized staff within these organizations, such as department heads or general counsel, typically handle these tasks. In this situation, Vietnamese courts often demand additional documentation to prove the officers’ authority, necessitating specific authorization documents that may not always be readily available. The courts sometimes remain unconvinced by declarations from the CEO/president affirming the authorization of these officers, and despite such assurances, they may still demand tangible proof of authorization, adding