11 th FAMI IPR-Symposium Enforcement Against Counterfeit Motorcycles In Asian Countries Mikiya ADACHI Intellectual Property Experts Group Motorcycle Overseas Subcommittee, Motorcycle Committee Japan Automobile Manufacturers Association, Inc. (JAMA) at Bangkok, Thailand March 30, 2015
Contents 1. Introduction of FAMI 2. Export of motorcycles from China 3. Features of counterfeit motorcycles 4. Examples of enforcement against counterfeit motorcycles 5. Request to DIP 1
Introduction of FAMI(Federation of Asian Motorcycle Industries) 1. Objectives of FAMI To promote consultation with regard to the development of the motorcycle industry in Asia, including discussion on marketing, distribution, R&D and other related issues. To act as an advisory capacity in all aspects of the motorcycle industry in Asia, including technical and legislations issues relevant to the industry. To promote closer relations and ties amongst member countries including liaison with motorcycle industries and associations in Asia. 2. The Six Member Associations Indonesia Japan : AISI (Asosiasi Industri Sepeda motor Indonesia) : JAMA (Japan Automobile Manufacturers Association, Inc.) Malaysia Philippines Thailand Taiwan : MASAAM (Motorcycle And Scooter Assemblers And Distributors Association of Malaysia) : MDPPA (Motorcycle Development Program Participants Association, Inc.) : TAIA (Thai Automobile Industry Association) : TTVMA (Taiwan Transportation Vehicle Manufacturers Association) 3. Registered Address: Singapore 4. Website http://www.fami-motorcycle.org/ 2
Introduction of FAMI(Federation of Asian Motorcycle Industries) SCS (Safety) Technical Committee SCE (Environment) SCH (Harmonization, Worldwide) HTF (Harmonization, Intra-FAMI) Vice-Presidents Secretary General President Committee Secretariats Treasurer Management Committee General Assembly Nontechnical Activities Research & Planning Committee Information Task Force Road Safety Task Force Main activities: Public relation Collecting Statistics, Updating FAMI web-site Main activities: Promoting Road Safety (Poster Campaign, Seminar) Information exchange on Road Safety Intellectual Property Rights(IPR) Task Force Task Force Leader: Ms. Stone Shin,(TTVMA) Main activities: Promoting IPR protection Exchange of IP information IPR Symposium, Consumer awareness activities 3
FAMI s Activities Principal concepts of anti-counterfeit measures: Registration of an IP right is critical for driving out actual counterfeit products and for preventing infringements (restraining effect). In addition to exercising IP rights against infringers, it is important to raise the awareness levels of enforcement agencies and consumers and to build up partnerships with industry and government organizations. Anti-counterfeit activities Acquisition of IP rights Enforcement of IP rights Awareness raising Lobby activities Promote application & prosecution Promote examination Action by local enforcement agencies Settlement (negotiations, suits) by parties Approaches to enforcement agencies & consumers Approaches to industry associations Approaches to government offices 4
Contents 1. Introduction of FAMI 2. Export of motorcycles from China 3. Features of counterfeit motorcycles 4. Examples of enforcement against counterfeit motorcycles 5. Request to DIP 5
Export of motorcycles from China About 9.46 million motorcycles were exported from China in 2013 (Million Units) 0.58 0.41 0.58 Europe 3.11 East Europe/CIS 0.49 Middle East 0.17 West Asia 1.59 0.07 East Asia North America 2.40 Africa South East Asia 0.05 Oceania South America
Contents 1. Introduction of FAMI 2. Export of motorcycles from China 3. Features of counterfeit motorcycles 4. Examples of enforcement against counterfeit motorcycles 5. Request to DIP 7
Conventional mode of counterfeiting Original Dead Copy Counterfeit Vietnam
Current mode of counterfeiting (1) Model B Model A A design mixing two models China Model B Scooter Underbone A design of a different product category Copyright Honda Motor Co. Ltd.
Current mode of counterfeiting (2) Model C (show models) Prototypes not on sale Model D Unauthorized use of component features Copyright Honda Motor Co. Ltd.
Contents 1. Introduction of FAMI 2. Export of motorcycles from China 3. Features of counterfeit motorcycles 4. Examples of enforcement against counterfeit motorcycles 5. Request to DIP 11
Examples of enforcement (1) -China To prevent counterfeit motorcycles from exporting from China, it is effective to seize them in the Trade Fair Canton Fair (China Import and Export Fair) The biggest trade fair held at Guangzhou in April and October every year. The traders all over the world come to buy Chinese products. Counterfeit motorcycles seized by administrative authorities Immediately after filing. In case infringement is committed repeatedly, the civil suit is initiated for damage.
Examples of enforcement (2) -Indonesia Police raid in Indonesia Announcement on IPRs, 2009/07 Police raids, 2009/08 ~ 2010/01 Published apology, 2010/06/21 Via a national newspaper KOMPAS
Examples of enforcement (3) -Vietnam Administrative seizure by the designs of parts Original scooter Counterfeit underbone Date: April 7-10, 2008 Place: Dak Lak Province, Vietnam The different category motorcycle copying only the front, the side and the rear. Registered designs of the parts Counterfeit
Examples of enforcement (4-1) Indonesia Invalidation case of misappropriated design application in Indonesia Indonesian Design law, art. 2(2) Problem A design that is not identical with any of the published designs in application date is Not identical means no infringement. deemed novel. Original Prior Design Company-A Sold motorcycles of a copied design which had been registered on account of the above article 2(2).
Examples of enforcement (4-2) Indonesia Invalidation case of misappropriated design application in Indonesia Period Invalidation trial Jurisdiction Parties Dec 2003 Patent Office Movant: JAMA s ~ May 2004 DIP member Outcome Lost Reason Denied similarity between original design and A s design Alleged infringement of TRIPS Agreement First trial Nov 2004 ~ Feb 2005 Surabaya Plaintiff: JAMA s member Commercial Defendants: Court DIP, A Lost Same as above Alleged infringement of TRIPS Agreement Second trial Mar 2005 ~ Dec 2005 Supreme Court Retrial May 2006 ~ Sep 2007 Supreme Court Plaintiff: JAMA s member Defendants: DIP, A Plaintiff: A Defendant: JAMA s member Won Won irrevocable (1) Affirmed similarity between the two designs (2) Denied creativity due to presence of prior design Decision of second trial maintained Pursuant to the TRIPS Agreement, Art.25, the scope of a design right extends also to designs similar (substantially identical) to the original design.
Examples of enforcement (5) -China Infringement of the designs was successfully stopped in exchange for licensing the patents original Patents & Design infringed Model E Design Changed Damage Royalty for licensing patent Patents & Design infringed Model F After negotiation Counterfeit Discontinuance of production Damage
Contents 1. Introduction of FAMI 2. Export of motorcycles from China 3. Features of counterfeit motorcycles 4. Examples of enforcement against counterfeit motorcycles 5. Request to DIP 18
Request to DIP Protection of Designs to be strengthened Longer period for protection Starting date Filing Period 10 years Philippines Filing 15 years Malaysia Filing 25 years Registration 20 years Filing 25 years Thailand Japan EC Currently it often takes more than 5 years for registration, only short period remains for enforcement. Partial design system Not valid for infringement Current design reg. Valid for infringement Counterfeit product Partial design reg. To cope with counterfeit motorcycles partially copied, partial design system is needed.
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