IP Infringement Risks - Is Building Replicas of Classic Cars One of Them? AFFA IPR

IP Infringement Risks – Is Building Replicas of Classic Cars One of Them?

Patent, Intellectual Property, Trademark, Industrial Design

Owning a rare classic car, even at a high price, can be a source of pride. What’s unique is that several classic cars, such as the Porsche 911, Shelby Cobra 427, and Ford Mustang GT500, which are widely used by Indonesian celebrities, are local manufacturers, aka custom or modified results from different cars. How is this practice viewed from an Intellectual Property law perspective?   In the production of vehicles, or in this case specifically four-wheeled cars, there are at least three categories of Intellectual Property (IP) related to it, namely Trademarks, Industrial Designs, and Patents. Let’s describe the details one by one.   Car Name & Logo are the Exclusive Rights of the Trademark Owner   According to the Trademark Law, a Trademark is a sign in the form of an image, name, word, letters, numbers, color arrangement, or a combination of these elements, which has distinguishing power and is used in trading activities for goods or services. The names and logos of well-known cars such as Porche, Shelby Cobra, and Ford Mustang are the property of Porche AG, Carroll Hall Shelby Trust, and Ford Motor Company, respectively. These Trademarks have been registered and recognized as well-known marks and are protected in many countries, including Indonesia.   The trademark’s ownership and protection are valid for ten years and can be extended. Therefore, there is very little chance for you to own or commercialize this Trademark in Indonesia without establishing official cooperation with the Trademark owner or its official distributor in Indonesia.   Regarding the use of Trademarks without permission, Article 100, paragraphs (1) and (2) of the Trademark Law clearly states, “Every person who without right uses a Trademark which is completely the same as a registered Trademark belonging to another party for similar goods and/or services which produced and/or traded, shall be punished with imprisonment for a maximum of 5 years and/or a fine of a maximum of IDR 2 billion.”   Industrial Design – Aesthetic External Appearance Protection   Another IP that is closely related to cars is Industrial Design. According to its definition, Industrial Design is the creation of a form of configuration, or composition of lines or colors, or lines and colors, or a combination thereof in a three-dimensional or two-dimensional form which gives an aesthetic impression and can be realized in three-dimensional or two-dimensional patterns and can be used to produce a product, industrial commodity, or handicraft.   Industrial Design protects the appearance of the car’s external design, whether as a whole or just in part, such as the design of the front bumper, rear bumper, rim shape, or even the threads of the tires. Industrial design can also protect the appearance of the dashboard, steering wheel, chair shape, and even the design of the pedal brake clutch, as well as the gear shift lever. Several Industrial Designs registered by Porche AG Source: Word Intellectual Property Office (WIPO)   As an Intellectual Property, Industrial Designs have a protection period of 10 years and cannot be extended. So, legally, you can use an expired design without getting approval from the owner. However, suppose you use a design that is still protected. In that case, Article 54 of the Industrial Design Law states that a maximum prison sentence of four years and/or a maximum fine of IDR 300,000,000.00 (three hundred million rupiah) awaits you.   Patent & Cars Innovations   Patents are another category of IP that can be contained in a car. If Industrial Design concerns an aesthetic external appearance, then a Patent only covers certain parts that include innovations in the field of technology. For example, braking sensor systems, light automation, or airbag systems are all protected Patents, and anyone who wants to use them must pay royalties to the Patent owner.   And if there is a violation or use of a Patent without permission, Article 161 of the Patent Law states that each person can be punished with imprisonment for a maximum of four years and/or a fine of a maximum of IDR 1,000,000,000 (one billion rupiah). Meanwhile, criminal sanctions, as regulated in Article 162 of the Patent Law for violations of Simple Patents, are imprisonment for a maximum of 2 (two) years and/or a fine of a maximum of IDR 500,000,000 (five hundred million rupiah).   If we are talking about modified cars, most of the technology contained in the original car will not be available. Firstly, because it is technically incapable of adopting the technology; secondly, it does not obtain a license for the Patent. That’s where modified cars become technically unsafe products because of a technological imbalance in their manufacture.   Legal Solution: Original Car Modification   Although since 25 September 2023, the Minister of Transportation of the Republic of Indonesia has promulgated Ministerial Regulation Number PM-45 of 2023 concerning Vehicles Customization, this regulation only regulates technical requirements regarding how modifications can and cannot be carried out so that the car is roadworthy, and provides a sense of security to users, as well as the requirements for a modification workshop to apply for a certificate, without touching on the Intellectual Property side.   Article 1 of Ministerial Regulation No. PM-45 of 2023 clearly states that modification or customization of motorized vehicles includes changes to the axle distance, construction, and/or materials, as well as changing the engine brand and engine type of a motorized vehicle for one’s benefit or individual.   However, it should be noted that customization by order by a custom workshop for one’s own or individual interests, if there is an Intellectual Property violation in it, is still at risk of receiving a complaint from the owner of the Trademark, Industrial Design and/or Patent, and may be subject to criminal sanctions as stated in each article of Intellectual Property law applicable in Indonesia.   For this reason, several legal practices widely implemented worldwide focus on making their own modified cars. An example of this is done by Mitsuoka Motor, a Japanese modification company that changes Japanese-manufactured…

FAQs: Patent Defences in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Defences in Indonesia

Patent

Patent Invalidity Q: How and on what grounds can the validity of a Patent be challenged? Is there a special court or administrative tribunal in which to do this?   A: Article 130 of the Indonesian Patent Law regulates several grounds to invalidate a Patent. Most notably, an invalidation decision issued by the Court of Commerce or the decision by the Patent Board of Appeal.   According to article 132 of the Patent Law, there are several grounds that can be used to challenge the validity of a registered Patent at the Court of Commerce (It should infringe articles 3, 4 and 7 of the Patent Law – therefore the patent should have not been granted). On the obvious level, a Patent may be susceptible to invalidation if it is not considered novel, does not have inventive steps, or is not industrially applicable. For simple Patents, the plaintiff can simply challenge its novelty and industrial application. On more specific notes, a Patent registration can be challenged if it infringes article 4 (list of the things not considered as inventions) and article 9 (list of inventions that cannot be granted Patents) of the Patent Law.   Another practical invalidation method is to see if the plaintiff has worked its Patent in Indonesia pursuant to article 20 of the Patent Law, which states that a registered Patent must be worked or used in Indonesia to remain in force. Failure to work or use the patent in Indonesia may result in any third party fling for invalidation of the Patent at the court of commerce. However, to date, there has not been any challenge against the non-compliance of article 20 in Indonesia.   Also, a Patent registration may also be invalidated if it fails to disclose the source of genetic resources and/or traditional knowledge in the Patent description document (see article 26 of the Patent Law).   The burden of proof lies with the plaintiff.   Absolute Novelty Requirement Q: Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?   A: The Patent Law and the examination guideline issued by the Patent Office adopt the ’absolute novelty’ approach. It simply states that the Patents examined shall only be registered if they are deemed novel – which means there should be no similar or identical invention at the time of fling. However, the Patent Law allows the disclosure of an invention for education research and development purposes for up to six months before the filing date, and even 12 months in the event the disclosure was made due to a trade secret infringement.   Obviousness or Inventiveness Test Q: What is the legal standard for determining whether a Patent is ‘obvious’ or ‘inventive’ in view of the prior art?   A: The patent examination guideline issued by the Patent Office does not stipulate further about the ’obviousness or inventive test’. It simply states that the patents examined shall only be registered if they have inventive steps.   Patent Unenforceability Q: Are there any grounds on which an otherwise valid Patent can be deemed unenforceable owing to misconduct by the inventors or the Patent owner, or for some other reason?   A: The Patent Law does not regulate the unenforceability of a registered Patent owing to misconduct by the inventors or the Patent owner.   Prior User Defence Q: Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the Patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?   A: The Patent Law also provides an opportunity for a prior user of a disputed Patent to defend itself if that user can prove that the use of the disputed patent does not rely on a specification, claims and figures identical to those of the registered Patent. Nevertheless, the prior use must be recorded at the Patent Office to be officially recognised as such (see article 14 of the Patent Law). Should you need more information regarding Patent defences in Indonesia, please do not hesitate to contact us via [email protected].

Steps to Consider if Your Copyright is Infringed in Indonesia - AFFA IPR

Steps to Consider if Your Copyright is Infringed in Indonesia

Copyright

To date, Indonesia is still considered as a “hot bed” for Copyright infringements. Many infringements vary from petty ones to the heavily industrialised ones. Copyrights are protected under the Law No. 28 Year 2014 on Copyrights and by definition, a (Copyright) Creation is any creative work in the fields of science, art, and literature that is produced based on inspiration, ability, thought, imagination, dexterity, skill or expertise expressed in tangible form. A Creator is a person or several people who produce a Creation. Meanwhile, the Copyright Holder is the Creator or other party, including a company that is also given the right by the Creator to obtain Exclusive Rights and economic benefits from a Creation.   Therefore, if another party benefits from a work without permission from the Copyright Holder, it can be categorized as a Copyright infringement. In particular, piracy activities also have the meaning clearly stated in Article 1 of the Copyright Law, namely the illegal duplication of works and/or related rights products and the widespread distribution of goods resulting from such duplication to obtain economic benefits.   Because economic benefits are the Copyright Holder’s exclusive right and infringement is still widespread in the modern era, if you are a Creator or Copyright Holder, you need to understand your rights and know what you can do when your work is pirated in Indonesia.   Record Your Creation before the Copyright Office under the DIrectorate General of Intellectual Property (DGIP)   Copyright protection is granted automatically from the time the copyrighted work is produced. This is different from other Intellectual Property, such as Trademarks and Patents, which must be registered first to obtain protection. Therefore, the term used to register copyright with the Directorate General of Intellectual Property (DGIP)—Ministry of Law and Human Rights (Kemenkumham) is “recordation.”   Hence, no recordation is required to prosecute or file a lawsuit against a party deemed to have violated Copyright. However, suppose there is a dispute regarding Copyright ownership of a work. In that case, a work recordation letter issued by the Minister, in this case the DGIP, and recorded in the General Register of Works is initial proof of ownership of a work and is substantial evidence in court.   Prioritize Mediation, Amicable Settlements, Before Pursuing Criminal Charges   Article 95 Paragraph (4) of the Copyright Law stipulates that Copyright violations, including piracy, must take mediation before making criminal charges.   So if you find that your work has been pirated, you can give an informal warning first, followed by a warning letter, if you don’t get a response.   Contents of the Warning Letter: In general, there are no standard rules governing the contents of a warning letter, but it must clearly describe the following 5 (five) things: Intended party; The problem being addressed; The demands of the sender, which the recipient must implement; Legal basis and legal standing of the sender; and The period for demands must be met.   Violations in Social Media/E-Commerce   Piracy is rampant on various social media and e-commerce platforms in the internet era. Technically, each platform also provides a complaint service if pirated goods are found. If you find Trademarks or Copyrights being bought and sold there without permission, you can start from the self-report system or go to the particular page provided.   In general, you need to prepare the following 3 (three) things if your report is to be followed up: Proof of ownership of the work in the form of a work recordation letter issued by the Ministry of Law and Human Rights, a statement of work ownership signed by you, or a similar document; Proof of your identity (ID card, driving license, passport, or similar); and Power of attorney from the Copyright Holder by the document proving ownership of the work you attached (if you are not the owner of the Copyright but are the recipient of the power of attorney from the Copyright owner to make a report).   You might also want to read: Tackling Counterfeiters on Indonesian E-Commerce Sites   Suppose pirates or platforms ignore your warning. In that case, you need to engage an experienced Intellectual Property Consultant who can provide further advice so that piracy activities from other parties can be stopped immediately or proceed with criminal prosecution at the Commercial Court.   Violations By Fellow Creators   A problem that also often occurs in Copyright disputes is disputes between Creators who claim they have the right to get more than others. For example, a comic was created jointly by an illustrator, a colorist, and a writer. If, in the future, the writer feels that his share is smaller, he might claim his rights. There was also a case that went viral in which a band was subpoenaed and prohibited from performing songs by writers who had left the band.   That is where the critical role of copyright recording with DGIP is to avoid disputes that may arise in the future between creators. In the Copyright Recordation, which is then included in the DGIP General Register of Creations, you can consist of all existing Creators. But again, mediation is still the most recommended route before trial.   Furthermore, you can also register a License Agreement for the work you own because it is possible for you, as the Creator of a character, to need vendors or other parties interested in getting economic benefits from your creation. For example, suppose a t-shirt or toy manufacturer is interested in commercializing your work in massive quantities and distributing it throughout Indonesia. In that case, you need to make a clear License Agreement that details how much royalties or profit sharing scheme you will get and register the agreement with DGIP as a firm grip in case of default or dispute in the future.   You might also want to read: Unveiling Copyright Ownership in the Film Industry: Legal Perspectives Should you need more information about Copyright protection in Indonesia, don’t hesitate to contact us at…

FAQs: Scope and Ownership of Patents in Indonesia - AFFA IPR

Frequently Asked Questions about Scope and Ownership of Patents in Indonesia

PatentLeave a comment

Types of Protectable Inventions Q: Can a Patent be obtained to cover any type of invention, including software, business methods and medical procedures?   A: The Patent Law was enacted in 2016 and the government eventually issued the much-anticipated Patent examination guidelines in 2019. The current Law differs from its predecessor in that it does not recognise the patentability of various types of subject matter, such as business methods, computer programs per se, new uses for existing products and new forms of existing compounds.   Article 4(c)(3) of the Patent Law excludes the patentability of business methods. Such patentability can, however, be recognised if the computer-implemented business method has technical character through technical means, as further explained by Annex 3, section 2.4 of the technical guidelines.   Article 4(d) of the Patent Law also excludes the patentability of computer programs. However, computer-implemented inventions are patentable, as described in Annex 3, section 2.1 of the technical guidelines. A computer-implemented invention is an invention that is realised using a medium such as a computer: one or more features of the invention are fully or partly realised by a computer program. The distinguishing feature of a computer-implemented invention is a program feature. A computer program is considered an invention if it involves a technical means such as a computer, server, phone, censors or devices, and when run on a computer, it produces a further technical feature outside normal physical interactions between the computer program (software) and the computer. Computer-implemented inventions can be categorised as process inventions (which include methods) and product inventions (which include systems, devices, computer programs, computer-readable storage media, or a combination of these).   Furthermore, article 4(f)(1) of the Patent Law excludes the patentability of new uses of existing products. This also excludes patentability of second or further medical use, which was previously patentable under the former Patent Law (the previous Patent Law was Law No. 14 Year 2001 on Patents). The Swiss-type second medical use format (previously used as an alternative for method-of-treatment claims that were otherwise not patentable under the previous Patent law) is no longer patentable under the current legislation. Several exceptions are discussed in Annex 1, section 5.2 of the technical guidelines, such as new uses for existing products being patentable when the protection of claims is directed to compound X with the feature of disease Y as a limiting or distinguishing feature. In cases of this kind, the claim protection is intended to allow a pharmaceutical industry body to produce a drug X that is indicated to treat only disease Y. The disease feature must be completely novel and inventive, must not involve the same action mechanism as the prior art and must be supported by clinical trial data, in vivo testing or in vitro testing in the description. The dosing regimen, administration time or frequency, patient group and action mechanism of the drug cannot be the distinguishing feature in product-for-new-use claims. An example of a patentable claim would be ‘compound X for use in treating allergy’, where the prior art indicated compound X for use as a pesticide.   Article 4(f)(2) of the Patent Law excludes the patentability of new forms of existing compounds. Based on Annex 1, section 5.3 of the technical guidelines, new forms include chemical chirality such as enantiomers or diastereomers, crystal forms, solvate forms, hydrate forms, salts, prodrugs and metabolites of existing compounds. Patentability can be acknowledged for new forms that result in meaningful e;cacy improvement, which is further explained in Annex 1, section 2 of the technical guidelines. Meaningful efficacy improvement may include increased bioavailability, improvement in stability, increased solubility, decreased toxicity, improvement in safety, improvement in potency, broader activity spectrum, decreased production cost or decreased treatment period. The meaningful e;cacy improvement should be supported by experimental data.   Article 9 of the Patent Law also further excludes the patentability of methods of examination, treatment, medication or surgery applied to humans or animals. This is further explained in Annex 1, section 6 of the technical guidelines. In vitro, ex vivo and in silico methods of examination or diagnosis are still patentable under this law. Non-therapeutic methods of treatment, such as cosmetic treatments, diet or other non-health-related treatments, are still patentable. In vivo methods of examination, therapeutic methods of treatment, methods of surgery and methods of medication applied to humans or animals are not patentable.   Also excluded in Article 9 of the Patent Law are living organisms. An exception is made for microorganisms such as yeast, fungi, bacteria and actinomycetes. An exception also applies to human cells and plant cells. Embryos, seeds, parts of plants, tissues, organs, transgenic plants and genetically altered animals are not recognised as patentable. New strains should be described specifically and the difference from known strains from the same species should be described for the novelty to be acknowledged. A novel microorganism with a different taxonomy is acknowledged as inventive. In relation to living organisms, patentability for essential biological processes for producing plants or animals is also excluded. Non-biological processes or microbiological processes are, however, patentable. Non-essential biological processes are biological processes that need human intervention, such as plant tissue isolation methods. Microbiological processes are biological processes that include microorganisms, such as fermentation. Artijcial insemination, cross-pollination and other processes that can occur naturally without human intervention are not patentable.   Nucleotides such as DNA, cDNA, primers, genes, vectors or transformants are patentable. Patentable nucleotides are nucleotides in the form of isolated nucleotides. Genes can be characterised by a polynucleotide sequence, an amino acid sequence or a mutation code. Vectors can be characterised by DNA sequence, DNA restriction map, molecular weight and number of base pairs. Transformants can be characterised by one host cell and the introduced gene (sequence). The novelty of gene sequences is examined with basic local alignment search tool (BLAST) searches (used in bioinformatics) or National Center for Biotechnology information databases. Gene sequences are acknowledged as inventive when the se’uence activity is different, at least qualitatively.   Patent Ownership Q: Who owns…

Various Intellectual Properties in Football - AFFA IPR

Various Intellectual Properties in Football

Intellectual Property1 Comment

At the beginning of May 2024, the United Nations (UN) General Assembly declared May 25 as the World Football Day. This date was chosen to commemorate the 100th anniversary of the first football competition at the 1924 Olympics held in Paris, France. The UN hopes this day will always be celebrated as a day of world unity, which can unite cultural differences and socio-economic barriers.   As the most widely played sport, Football also involves a lot of Intellectual Property, with a turnover of up to trillions of dollars. This includes Trademarks, Patents, Industrial Designs, Copyrights, Trade Secrets, Domain Names, and License Agreements. Below, we describe some of the Intellectual Property we most often encounter in Football.   Trademark   Every competition and tournament certainly has a name. We know the FIFA World Cup, UEFA Champions League, English Premier League (EPL), and Asian Football Confederation (AFC). These names are synonymous with quality and entertaining games. Most importantly, they are all registered Trademarks that unauthorized parties cannot use arbitrarily. You cannot just produce and sell t-shirts with the UEFA Champions League logo without permission from the Union des Associations Européennes de Football.    Trademarks in football are not only related to competition; several names of top players have also been registered as Trademarks. For example, “CR7” belongs to Cristiano Ronaldo, “Leo Messi” belongs to Lionel Messi, and even Mbappe’s celebration pose. You might also want to read: Kylian Mbappé Has Trademarked His Iconic Goal Celebration – Why Is It Possible?   Patent An innovation that cannot be separated from modern football is the Video Assistant Referee (VAR). With this technology, referee decisions on the field can be more accurate, not controversial. VAR, whose patent is owned by Hawk-Eye Innovations (part of Sony), was first used at the 2018 FIFA World Cup in Russia. With VAR, the referee can quickly check whether a goal is legal, a player is caught offside, or cameras from many sides cover other violations.   As a Patent, FIFA pays royalties to Hawk-Eye Innovations for its use. Hawk-Eye also maximizes its income by marketing this technology to 90 countries worldwide. However, with a cost per season of around USD 6.2 million, not all leagues worldwide can afford to use it.   The Patent for football also includes the ball itself. In almost every World Cup event, the ball is presented with more sophisticated technology than before, which is expected to increase the accuracy of the players’ shots.   Industrial Design   Like the ball in football, the shoes players use may contain patent-protected innovations. But if not, the shoes and all the clothes we see are registered as Industrial Design.   Football jerseys or costumes are one of a football club or team’s biggest sources of income. For diehard fans, wearing a jersey when watching a match or even going to the mall is a matter of pride and proof of their support for their favorite team.   However, jerseys are also among the Intellectual Property most often pirated. As true fans, of course, we can choose to only buy the original because only then is the money we spend commensurate with the quality we get, and most importantly, the income will go to the club we support.   Copyright   League and match materials, images, promotions, or other content related to football broadcasts fall into the Copyright category. Each match is owned by a different owner, who also sells broadcast rights to TV stations in each region.   These Copyright holders even opened a bidding scheme to give the highest buyers the opportunity to obtain the Broadcasting Rights. Because it costs a lot of money to get the rights, it is understandable that the Broadcasting Rights holders are very protective of the material they own. They don’t let other parties broadcast it in the regions they already cover, or prosecution will be carried out.   Trade Secret   Playing strategies, including technical details of formations and other confidential information, can be categorized as Trade Secrets. These secrets give each team a competitive advantage by not revealing certain important information to the public or rival teams. All team members, including the technical and health trainers, are bound by a Non-Disclosure Agreement (NDA).   Domain Name   The Domain Name associated with each league and competition is very important in maintaining its online presence and marketing. Fifa.com, uefa.com, and the-afc.com have been registered to prevent cybersquatting and Trademark misuse. The fifa.com domain, for example, is available in various languages to make it easier to access and search for the latest information and to disseminate official information to all media and football fans throughout the world.   License Agreement   Licensing Agreements may include Trademark Licenses to produce and sell merchandise, mobile phone applications, video games, and more. Game developers who want to present a team with the appropriate club name or accurate appearance of the players have to pay significant royalties to FIFA.   Finally, in organizing football, we must be aware of and involve all related Intellectual Properties (IPs). In fact, IP is the financial generator in every activity. Therefore, don’t forget to involve IPs in every tournament you run and reap the benefits. Should you need further information regarding Licensing Agreements, Trademark registration, Patents, Industrial Designs, Copyrights, or other Intellectual Property, please do not hesitate to contact us at [email protected].

FAQs: Patent Enforcement Proceedings in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Enforcement Proceedings in Indonesia

Patent

Lawsuits and Courts Q: What legal or administrative proceedings are available for enforcing Patent rights against an infringer? Are there specialized courts in which a Patent infringement lawsuit can or must be brought?   A: In Indonesia, Patent owners can enforce their rights against infringers through various legal and administrative proceedings. Some of these proceedings include the following: Civil Lawsuit: Patent owners can file a civil lawsuit against infringers in a commercial court. The court can grant temporary injunctive relief, damages, and other remedies to the Patent owner. However, legal costs cannot be borne by the losing party. Criminal Complaint: Patent owners can file a criminal complaint against infringers with the civil investigator, the Indonesian Police Force, or both. The police will investigate the complaint and, if they find evidence of infringement, can prosecute the infringer. If convicted, the infringer can face imprisonment, a fine, or both.   The commercial courts are responsible for handling Intellectual Property cases in Indonesia, and they have been established in Jakarta, Makassar, Medan, Semarang, and Surabaya to specifically deal with commercial matters, such as bankruptcy and Intellectual Property cases, according to President Decree No. 97 of 1999. However, the judges who preside over Patent infringement matters do not necessarily have the required technical backgrounds. Hence, the presence of expert witnesses in Patent litigation cases is essential. In cases of infringement, the jurisdiction is determined by the defendant’s domicile. If the Patent holder or claimant is located outside Indonesia, the case must be filed with the Commercial Court of Central Jakarta, as specified in article 144 of the Patent Law.   Trial Format and Timing Q: What is the format of a Patent infringement trial?   A: Civil proceedings in Indonesia are conducted in writing and oral arguments. The judges will listen to the oral arguments of each party one at a time, and they rely heavily on the documentary evidence. Witnesses of fact can also provide oral evidence before the court. However, a witness statement or affidavit alone will not be sufficient since it is considered merely supplementary documentary evidence. In general, the procedure of the trial is as follows:   Attendance at the first hearing after the court summons both plaintiff and defendant; Attendance at the second hearing, when the defendant files its response to the plaintiff’s cancellation suit; Preparation of the plaintiff’s reply to the defendant’s response to the suit; Attendance at the third hearing to file the plaintiff’s reply; Attendance at the fourth hearing when the defendant files its response to the plaintiff’s reply; Preparation of the plaintiff’s evidence to be submitted to the court; Attendance at the fifth hearing to submit the plaintiff’s evidence and review the defendant’s evidence; Preparation and filing of the conclusion of the case based on documents and evidence filed with the court by both plaintiff and defendant; Attendance at the sixth hearing on the filing of the conclusion of the case;  Attendance at the seventh hearing to hear the judges’ decision; and Issuance of the court’s decision.   For Patent civil disputes, pursuant to article 145(4) of the Patent Law, the trial can be conducted privately if both parties make requests to the Court of Commerce for the trial to be private. This is to protect the secrecy of processes that would be easily manipulated or improved by a person knowledgeable in the relevant field.   Note that by law the court of commerce must issue its decision within 180 days of the date of filing of the civil suit in Patent matters. However, for criminal actions the process may take longer depending on the complexity of the case and the number of witnesses and evidence presented. However, it typically lasts between six to 18 months.   Unlike in various jurisdictions where there are specialised courts or judges that specialise in Intellectual Property matters, Indonesia does not have such a system. Bear in mind that the court of commerce discussed above also caters to non-IP matters if the dispute is of a commercial nature. Also, the judges do not have science backgrounds – hence the importance of involving expert witnesses during the suit. Expert witnesses may be called upon to provide their opinions on technical or scientific matters that are relevant to the case.   Indonesia has not adopted the jury system, and judges play an important and active role in court hearings. Furthermore, precedents are considered to be merely advisory in nature and they do not have binding legal force as in common law systems.   Proof Requirements Q: What are the burdens of proof for establishing infringement, invalidity and unenforceability of a Patent?   A: As per article 1865 of the Civil Code, the party making the claim is responsible for providing evidence to support it. Therefore, in a Patent infringement case, the claimant must prove that infringement has occurred by showing the evidence.   However, article 145 of the Patent Law allows the reversal of the burden of proof to the defendant in a Patent invalidation lawsuit involving a patented process if: The product resulting from the patented process is new; or The product is suspected of being produced using the patented process, but the Patent holder cannot determine the process used to make the product even after making enough efforts to find out.   A Patent owner holds exclusive rights to exploit their Patent and prevent others from using, making, importing, renting out, delivering, supplying for sale or rental, or conducting any other activity involving the patented product or process. However, in cases involving patented processes where the resulting product is new and the Patent holder cannot determine how the defendant produced it, the burden of proof can be reversed, as per article 145 of the Patent Law. In such cases, the court will require the defendant to prove that their product does not involve a patented process. The judge will also safeguard the defendant’s interests by potentially closing the proceedings to the public.   Standing to Sue Q: Who…

An Analysis of Trademark Law in Indonesia - AFFA IPR

An Analysis of Trademark Law in Indonesia

Trademark

In Indonesia, the primary law on trademarks is Law No. 20 of 2016 on Marks and Geographical Indications, known as the Trademark Law. The Trademark Law was updated through Law No. 6, 2023 on the Enactment of a Replacement Government Regulation in Lieu of Law No. 2, 2022 on Job Creation as Law. Furthermore, there are several bylaws that regulate more specific matters, including:   Government Regulation No. 28, 2019 concerning Types and Tariffs of Non-Tax State Revenues Applicable to the Ministry of Law and Human Rights, which sets the official fees for various actions that can be filed before the Directorate General of Intellectual Property (DGIP) under the Ministry of Law and Human Rights. Government Regulation No. 22, 2018 on the International Registration of Marks Under the Protocols Relevant to the Madrid Agreement Concerning the International Registration of Marks, which covers all aspects of international registration filed in or from Indonesia. Government Regulation No. 90, 2019 concerning the Trademark Appeal Commission, established in 1995, concerning procedures for application, examination and settlement of appeals at the commission. The Ministry of Law and Human Rights Regulation No. 12, 2021 on the Amendment to Regulation No. 67, 2016 concerning the Trademark Registration Decree of the Director General of Intellectual Property in the Field of Trademarks. The ministerial regulation covers registration, classes of goods and services, and the rectification of issued certificates and records. The Ministry of Law and Human Rights Regulation No. 10, 2022 on the Amendment to Regulation of the Ministry of Law and Human Rights Regulation No. 12, 2019 on Geographical Indications.   Scope of Trademarks   The Trademark Law holds a mark to be any sign capable of being represented graphically in the form of drawings, logos, names, words, letters, numerals, colour arrangements, in two and/or three-dimensional shapes, sounds, holograms, or a combination of two or more of these elements to distinguish goods and/or services produced by a person or legal entity in trading goods and/or services.   It acknowledges two types of Trademarks: traditional and non-traditional marks. Some marks cannot be registered due to their lack of inherent distinctiveness. These conditions are met if marks:   Are contrary to the state ideology, laws and regulations, religious morality, ethics, or public order; Are identical to, related to, or simply describe the goods and/or services for which registration is sought; Contain elements that could mislead the public about the origin, quality, type, size, variety or purpose of the goods and/or services for which registration is sought, or are the names of protected plant varieties for similar goods and/or services; Contain information that is not consistent with the quality, benefits, or efficacy of the goods and/or services produced; Lack distinctive character; Are common names and/or symbols belonging to the public; or Contain functional forms.   Applying   The Trademark Law adopts a first-to-file principle. In general, any individual, organisation or company can file for Trademark registration. However, the law also regulates Trademark registrations that are filed in bad faith. Article 21 of the Trademark Law stipulates that an application is refused if it is submitted by an applicant in bad faith.   In practice, it is quite challenging to determine whether an application is filed in bad faith or not.   A bad-faith application that later matures to registration can always be invalidated at the Court of Commerce, as regulated under article 77 of the Trademark Law. This article stipulates that: “The lawsuit for invalidation may be filed in unlimited time if there is bad faith and/or the relevant mark contravenes the state ideology, laws and regulations, morality, religions, decency and public order”.   Filing    A Trademark search is strongly suggested for anyone who wishes to file a Trademark application in Indonesia. The search report will identify potential hazards and stumbling blocks to an otherwise successful registration process.   Assuming the search report gives an all-clear sign to further the application process, the applicant will then need to supply the following:   Name of applicant; Address; List of goods and services; and Representation of the mark to be filed, which can be in the form of woodmark, logo or non-traditional marks. Once the information has been provided, the patent lawyer will prepare two documents to be signed by the client: a power of attorney, and a statement of mark ownership.   Since 2019, e-filing is the only acceptable method of filing in Indonesia.   Timeline   Assuming the application does not receive any opposition and provisional refusal, then it may take 10-13 months from filing to obtaining a registration number. This estimate is significantly faster than it used to be, when even a straightforward registration would take two to three years.   Opposing    Applications are published for two months only. During the publication period, any interested party may file for opposition. Their opposition will be considered during the substantive examination stage.   Once the publication period has lapsed, there are no other formal means of filing for opposition, including extension requests.   To successfully oppose an application, it is strongly recommended that the opposer has a valid legal standing – namely, an earlier Trademark application or registration in Indonesia. Otherwise, it is likely that the examiner will reject the opposition by citing the first-to-file principle.   Invalidations and cancellations initiated by any third party, which must be filed at the court of commerce, are only feasible once the target Trademark has been registered.   Foreign Name    A Trademark can only be protected if it is registered in Indonesia, regardless of its fame. However, the Trademark Law has a mechanism to somewhat protect famous foreign Trademarks from bad-faith registrations by other parties.   Should another party try to maliciously file an application for a Trademark that is identical or similar to a famous foreign Trademark, the application will be rejected on the basis of article 21 of the Trademark Law, which stipulates: “An application is refused if the mark is substantively similar to or identical with a well-known…

International IP Index 2024: Indonesia to catch up on IP Commercialization - AFFA IPR

International IP Index 2024: Indonesia to Catch Up on IP Commercialization

Intellectual Property1 Comment

Every year, the United States Chamber of Commerce releases the “International Intellectual Property Index,” which ranks countries worldwide based on their growth in Intellectual Property, commercialization of Intellectual Property assets, law enforcement, system efficiency, and membership and ratification of international treaties. This year, Indonesia is ranked 49th out of 55 countries, or 7th from the bottom. What caused it?   The International Intellectual Property (IP) Index is a comprehensive assessment of the intellectual property framework of countries worldwide. It indirectly shows a country’s policies in encouraging innovation, creativity, economic growth, and wider investment opportunities.   Intellectual Property Becomes an Important Decision for Investment   Intellectual Property as an asset must be recognized. Today’s large companies are at the forefront thanks to their Intellectual Property assets. Technology companies such as Tesla, Apple, Microsoft, and even Walt Disney became rich thanks to the Copyrights, Patents, Trademarks, Industrial Designs, and Trade Secrets they owned. Therefore, when a country cannot provide a climate conducive to protecting Intellectual Property (IP), it is considered to have failed to protect the wealth of its citizens and its business ecosystem. If this is the case, it makes sense that investment in the lowest-rank countries will be smaller than in the upper-rank countries.   The International IP Index published by the United States Chamber of Commerce was first published in 2012. At that time, it only described the performance of 11 countries: the United States, Australia, Brazil, Chile, China, India, England, Canada, Malaysia, Mexico, and Russia. The 12th edition, released in February 2024, has experienced an increase from the previous year, covering 53 countries. This year’s 55 countries have covered over 90% of the world economy’s Gross Domestic Product (GDP), so it is hoped to represent the condition of world IP.   From Southeast Asian countries, the IP Index maps the performance of Singapore, Malaysia, the Philippines, Brunei, Vietnam, Thailand, and Indonesia as samples. Unfortunately, Indonesia is indeed the lowest in Southeast Asia.   The following is the overall ranking of the 2024 International IP Index:   1 United States 95,48% 29 Peru 49,82% 2 United Kingdom 94,12% 30 Chile 49,72% 3 France 93,12% 31 Colombia 48,84% 4 Germany 92,46% 32 Saudi Arabia 48,42% 5 Sweden 92,12% 33 Brazil 46,52% 6 Japan 91,26% 34 United Arab Emirates 46,00% 7 The Netherlands 91,24% 35 Jordan 44,70%  8 Ireland 89,38% 36 Honduras 42,16% 9 Spainl 86,44% 37 Philippines 41,58%  10 Switzerland 85,98% 38 Brunei 41,08%  11 South Korea 84,94% 39 Ghana 40,88%  12 Singapore 84,92%  40 Vietnam 40,76% 13 Italy 83,90% 41 Ukraine 40,30%  14 Australia 80,70% 42 India 38,64% 15 Hungary 76,90% 43 Thailand 38,28%  16 Canada 76,22% 44 Kenya 37,88% 17 Israel 72,74% 45 South Africa 37,28%  18 Greece 71,42% 46 Argentina 37,00% 19 Poland 70,74% 47 Nigeria 36,34%  20 New Zealand 69,36% 48 Egypt 33,86% 21 Taiwan 67,34% 49 Indonesia 30,40% 22 Morocco 62,76% 50 Ecuador 29,58% 23 Mexico 59,98% 51 Kuwait 28,42% 24 China 57,86% 52 Pakistan 27,42% 25 Dominican Republic 55,30% 53 Algeria 26,36% 26 Costa Rika 55,04% 54 Russia 25,00% 27 Malaysia 53,44% 55 Venezuela 14,10% 28 Turkiye 51,04%   Why is Indonesia’s Ranking Low?   Indonesia’s performance in the index fell 0.02% from the previous year but remained at the same rank.   Indonesia’s Performance based on Indicators Source: 2024 International IP Index – U.S. Chamber of Commerce   From the graph above, it can be seen that the number of Patents owned by Indonesia still needs to be stronger, unable to keep up with the growth of Copyrights, Trademarks, and Industrial Designs. Among all the IPs used as indicators, only Copyright is closest to the Asian average performance.   For other indicators, Indonesia is quite good regarding system efficiency but very low in IP asset commercialization. It is the country with the lowest score for this indicator, recorded at only 4.17%. It is below Ecuador, Venezuela, Ghana, Kenya, Russia, and even Vietnam.   Indonesia’s ranking based on the Commercialization of IP Asset Indicator Source: 2024 International IP Index – U.S. Chamber of Commerce   The commercialization of IP Assets is an indicator that measures the presence of barriers and incentives for the commercialization and licensing of IP assets. In more detail, this indicator includes barriers to technology transfer, registration and disclosure requirements of licensing agreements, direct government intervention in setting licensing terms, and the existence of tax incentives for the creation and commercialization of IP assets.   In particular, the United States Chamber of Commerce assesses that Presidential Regulation of the Republic of Indonesia Number 77 of 2020 concerning Procedures for Implementing Patents by the Government has gone far beyond the stated goals and circumstances for the issuing of compulsory licenses under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, minimum standards for the regulation by national governments of different forms of IP as applied to nationals of other World Trade Organization (WTO) member nations. This presidential regulation is considered to hinder the transfer of technology on Patents, and Biopharmaceutical patentability standards are outside international norms.   However, Indonesia is generally at the bottom of the ranking because its commercialization foundation still needs to be stronger. Public awareness of IP still needs to improve; the knowledge of IP as an asset is minimal. There are still many people who do not appreciate IPs, not because they cannot afford to buy, but because the tendency to enjoy the IPs without paying still exists. Copyright growth is high, but the market hopes these works can be enjoyed for free. As a result, creators scream, and their productivity decreases. This also causes the innovation climate in Indonesia is not good. Because the public still needs to consider innovation to be something that can be commercialized, the growth of Patents from Indonesia is low. dapat dikomersialisasikan, pertumbuhan Paten dari Indonesia pun rendah. To change this mentality, more than education is needed; concrete steps from the government and private sectors are needed to give the highest appreciation to every existing IPs from within and outside the…

AFFA Represents Inner Mongolia Kunming Cigarette Limited Liability Company for a Successful Bad-Faith Trademark Invalidation in Indonesia - AFFA IPR

AFFA Represents Inner Mongolia Kunming Cigarette Limited Liability Company for a Successful Bad-Faith Trademark Invalidation in Indonesia

Trademark1 Comment

On April 25 2024, the Panel of Judges at the Central Jakarta District Court issued a favourable decision for Inner Mongolia Kunming Cigarette Limited Liability Company to invalidate the “DONGCHONGXIACAO” Trademark under registration number IDM000791780 which had been registered in bad faith since May 2018 in Indonesia.   “DONGCHONGXIACAO” is a Trademark that has been registered and made famous by Inner Mongolia Kunming Cigarette Limited Liability Company (hereinafter referred to as the “company”) in China since 2017, as well as in several other countries including Pakistan, Brazil, Saudi Arabia, Qatar, and the United Kingdom. In 2021, the company decided to apply for Trademark registration with application number DID2021069519 in Indonesia. However, the application was rejected by Trademark Office (DGIP) in 2022 on the grounds that there were substantial similarities with the prior Trademark “DONGCHONGXIACAO” which was registered with number IDM000791780 in the same class, namely class 34.   In response to this rejection, Inner Mongolia Kunming Cigarette Limited Liability Company, which appointed AFFA Intellectual Property Rights, decided to file an act for invalidation of this Trademark. This is done considering that the company believed that the prior Mark “DONGCHONGXIACAO” with registration number IDM000791780 was applied for and registered by a party who did not have the rights to the Trademark nor any legitimate reason to own it, considering that the company has earlier registrations of the same Trademark in other countries which were  submitted before the date of the Trademark application of the prior Mark.   Apart from being registered and marketed in various countries around the world, the arguments in this action were based on the following 4 (four) points::   Similarities in visual elements   Notes Plaintiff’s Trademark Defendant’s Trademark Similarities in Words DONG CHONG XIA CAO DONGCHONGXIACAO Similarities in Writing Dong Chong Xia Cao DONGCHONGXIACAO Similarities in Word Order D-o-n-g-C-h-o-n-g-X-i-a-C-a-o D-O-N-G-C-H-O-N-G-X-I-A-C-A-O Conclusion The Defendant’s Trademark can create an impression that confuses the public, so the Trademark market can think that the Trademark is the Client’s Mark.   Similarities in pronunciation   Notes Plaintiff’s Trademark Defendant’s Trademark Similarities in essence in Trademark Pronunciation dong-chong-xia-cao dong-chong-xia-cao   Similarities in the goods covered in Class 34 They have similarities and close relationships, starting from the function, intended use, and origin of the goods, as well as similarities in marketing channels/target markets, so it is feared that they have the potential to confuse consumers.   Plaintiff’s Trademark Defendant’s Trademark DONGCHONGXIACAO Application Number DID2023116953 – Class 34 Registered Number IDM000791780 – Class 34 Type of Goods: “Tobacco powder; shredded tobacco; cigar; small cigars; cigarette; electronic cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco; chewing tobacco; tobacco to snort.” Type of Goods: “Tobacco and processed tobacco products, including smoking tobacco, tobacco pipes, cigars and cigarettes, smokers’ goods, including smoking pipes and lighters, electronic cigarettes, non-metal cigarette ash containers, cigarette boxes, gas cylinders for cigar lighters, cigarillos (small cigars), tobacco for self-rolling cigarettes, chewing tobacco, snuff tobacco, kretek, betel tobacco, heated tobacco products, devices electronics and parts thereof for heating cigarettes or tobacco to release nicotine-containing aerosols for inhalation, liquid nicotine solutions for use in electronic cigarettes, cigarette paper, cigarette tubes, cigarette filters, tobacco containers, pouch equipment for rolling cigarettes.”   The trademark invalidation action that was officially filed was registered on December 18, 2024, at the Registrar’s Office of the Commercial Court at the Central Jakarta District Court, with the Trademark Office/Directorate General of Intellectual Property (DGIP) was also included as a co-defendant. Through a series of hearings,, the Panel of Judges at the Commercial Court at the Central Jakarta District Court finally issued a favourable decision for the plaintiff. The decision was based on the following considerations:   “The owner of an unregistered Trademark can file an action as intended in paragraph (1) after submitting an Application to the Minister,” as regulated in Article 76 paragraph (2) of Law Number 20 of 2016 concerning Marks and Geographical Indications (Trademark Law) and the Plaintiff has done this prior to the submission of the suit to the Court of Commerce. The Trademark Invalidation Action has been appropriately and properly filed through the Commercial Court at the Central Jakarta District Court, as regulated in Article 85 paragraph (2) of the Trademark Law; The Panel of Judges has carefully examined that the Defendant’s Trademark is substantially similar to the Client’s Trademark, which was previously registered in China on 28 August 2017. Both the sound of the speech, the arrangement of the letters, and the words used in the word DONGCHONGXIACAO Trademarks, according to the panel of judges, have very close similarities, so it is appropriate that the type of goods owned by the Plaintiff’s mark and the Defendant’s mark can be considered as a Trademark which is substantially similar in the type of goods applied for and also registered; Defendant should not use and/or apply for registration of a Trademark which is similar in essence to Plaintiff’s Trademark because there are many other words or arrangements of words that the Defendant can create and use as a Trademark without having to imitate and/or plagiarize the Plaintiff’s Trademark; The application for registration of the Trademark submitted by the Defendant is not an application that can be registered as intended in Article 21 paragraph 3 of the Trademark Law, or other words, the application for registration of the DONGCHONGXIACAO Trademark should be rejected by the Co-Defendant (DGIP) because the Trademark registered by the Defendant is the result of imitation and/or plagiarism of the Plaintiff’s Trademark which already existed and was previously registered in China; Defendant never appeared at the trial, even though they had been summoned legally and properly; this also proves that the Defendant did not refute the Plaintiff’s arguments, which were that the registered Trademark was substantially similar to the Plaintiff’s mark, which had previously existed and was registered earlier in China, and that the Defendant registered the Trademark in bad faith.   You might also want to read: A Win for the “WIN” – AFFA Represents Hongyunhonghe Tobacco (Group) Co. Ltd. for…

A Win for the WIN - AFFA Represents Hongyunhonghe Tobacco for a Successful Trademark Non-Use Cancellation in Indonesia

A Win for the “WIN” – AFFA Represents Hongyunhonghe Tobacco (Group) Co. Ltd. for a Successful Trademark Non-Use Cancellation in Indonesia

Event, Intellectual Property, Trademark

When your Trademark Registration application is rejected in Indonesia, it is often due to the existence of another prior Trademark with the same elements that have been registered in the same class with the Directorate General of Intellectual Property (DGIP). Since Indonesia applies the first-to-file principle, if you register the same Trademark after another Trademark that has been filed or registered earlier, you must consider alternative options to prevent a potential rejection by the DGIP.   The dilemma usually arises when there is an identical prior Trademark that gets in the way of a successful registration, but you have no other option but to still keep using the identical Trademark for business purposes in Indonesia. At times, rebranding exercise costs more than any potential legal action that may be required to cancel a prior Mark due to non-use. In this scenario, the latter should be considered.   As stated in Article 74 of the Trademark and Geographical Indications Law (Trademark Law), an interested third party can apply for cancellation of a registered Trademark in the form of attack legally on the grounds of non-use to the Court of Commerce if the Mark has not been used for trade in goods and/or services for 3 (three) consecutive years from the date of registration or last use.   Therefore, if we can prove that the Trademark is genuinely not in use after a thorough investigation, the Court of Commer can cancel a registered Trademark upon request of an interested third party.   Since 2022, AFFA has been trusted by Hongyunhonghe Tobacco (Group) Co. Ltd., which originates from the People’s Republic of China to manage its Intellectual Property in Indonesia, one of which is the WIN Trademark in class 34 which includes types of cigarette filters, filters for cigarettes, lighters, liquid solutions for use in electronic cigarettes, lighters for smokers, flavorings other than oil essentials for tobacco, cigarettes, electronic cigarettes, snuff and hand-rolling tobacco.   However, based on initial searches, there is already a WIN Trademark under registration no. IDM000030697 in the same class owned by PT Sumatra Tobacco Trading Company (STTC)  of North Sumatra, Indonesia. Under normal conditions, of course, the client’s chance to register WIN is low because it will be rejected as regulated in Article 21 paragraph (1) letter (a) of the Trademark Law, which states that a Trademark application is rejected if the Trademark has similarities in essence or its entirety with the registered Trademark owned by the other party for similar goods and/or services.   Previously, the WIN Trademark of Hongyunhonghe Tobacco had been registered in China, the European Union, Australia, Brazil, Mexico, South Korea, Cambodia, Vietnam, and even Singapore since 2009. This fact alone already constitutes the definition of “an interested party” as regulated by Article 74 of the Trademark Law.   After the investigation process was carried out, it was found that STTC had not used the Trademark for 3 consecutive years from the date of registration or from the date of last use. Consequently, the petition for cancellation was filed to the Commercial Court – Central Jakarta District Court on September 14, 2023, as regulated in Article 76 paragraph (1) of the Trademark Law. Unfortunately, the Court of Commerce decided to reject the petition. Therefore, the next step was to file a cassation to the Supreme Court on September 27, 2023.   The Supreme Court of the Republic of Indonesia finally decided that the Central Jakarta District Court had misapplied the law, granted our cassation request on January 25, 2024, while canceling the Commercial Court’s decision, and asked DGIP to register the cancellation of the WIN Trademark registration from the General Register of Trademarks and announce it in the Official Trademark Gazette.    You might also want to read: AFFA Represents Trek Bicycle to Win a Trademark Non-Use Cancellation Action in Indonesia This success story is a testament that with thorough preparation and investigation, a non-use cancellation action is possible in Indonesia. Should you need more information about Trademark registration and protection in Indonesia or abroad, please email us at [email protected].