[Reminder] Indonesia - Patent Working Statement to be Submitted Before 31 December 2025 - AFFA IPR

[Reminder] Indonesia – Patent Working Statement to be Submitted Before 31 December 2025

Patent, Intellectual Property

All Patent Owners in Indonesia are reminded to submit their Patent Working Statement or ‘Statement of Use’ no later than 31 December 2025 or before the date of the annuity deadline. This requirement applies to all Granted Patents and is mandated under the latest amendments to Indonesia’s Patent Law. Failure to comply may result in legal consequences, including compulsory licensing and/or invalidation.   Previously—and still applicable—Article 20 of the Patent Law has regulated the obligation to implement Patents in Indonesia as follows:   Product Patent: Obligated to manufacture, import, or license the product. Process Patent: Obligated to manufacture, license, or import the product resulting from the patented process. Method, System, & Use Patents: Obligated to manufacture, import, or license the product resulting from the method, system, or use.   Obligation to Implement Patents in Indonesia   In this third amendment, Article 20A has been added to the Patent Law, stipulating that every Patent holder is required to submit a declaration of Patent use in Indonesia and report it to the Minister through the Directorate General Intellectual Property (DGIP) at the end of each year, accompanied by proof of implementation. The implementation of the Patent may be carried out either by the Patent holder or by a third party under license from the Patent holder. The objective of this provision is to encourage technology transfer, investment, job creation, and tangible economic growth for Indonesia.   Forms of Patent implementation may include: Manufacturing the patented product but it has not been commercialized yet; Manufacturing the patented product and it has already been commercialized; Utilizing the patented process but it has not been commercialized yet; Utilizing the patented process and it has already been commercialized; Importation; and Licensing.   Consequences of Non-Implementation of Patents In this latest amendment, provisions regarding consequences such as compulsory licensing or Patent revocation, which were previously regulated under Articles 82 and 130 of the Patent Law, have been removed.   Instead, the annual reporting obligation as stipulated in Article 20A serves as an instrument for the government to monitor Patent utilization in Indonesia.   Although administrative sanctions for non-compliance with the reporting obligation are not explicitly regulated yet, this obligation opens the possibility for the government to issue further implementing regulations or administrative policies in the future.   Acceptable Reasons for Delayed Implementation Previously, the Patent Law allowed Patent holders to provide legitimate reasons for not yet implementing their Patent, such as:   Force majeure circumstances. Regulatory or licensing obstacles to production. Production is still in preparation stages.   In the amended Patent Law, although these reasons are no longer explicitly listed, Patent holders may still include such reasons in their annual reports as part of the explanation or justification in cases where implementation has not been optimal.   You might also want to read: 5 Stages of Patent Registration Process in Indonesia   Should you need further information regarding the submission of Patent Working Statement in Indonesia, please contact us through the channels below: ? E-Mail : [email protected] ? Book a Call : +62 21 83793812 ? WhatsApp : +62 812 87000 889   About AFFA: Established in 1999, AFFA Intellectual Property Rights is an Indonesia-based boutique IP law firm serving international brands and innovators, offering full-service support—from prosecution and licensing to enforcement and commercialization—in Indonesia’s dynamic IP landscape. Our firm is widely recognized for its excellence, with accolades including “Best Boutique Law Firm in Indonesia” and “IP Enforcement Firm” at the Indonesia Law Firm Awards 2025 by Asia Business Law Journal, as well as being listed as a “Recommended Firm 2024 — Indonesia” by WTR 1000: The World’s Leading Trademark Professionals. For more information, please visit: www.affa.co.id.

Indonesian IP Office Declares 2025 the Year of Copyright and Industrial Design - What Are the Benefits? - AFFA IPR

Indonesian IP Office Declares 2025 the Year of Copyright and Industrial Design – What Are the Benefits?

Intellectual Property

The Indonesian IP Office (DGIP) has reaffirmed its commitment to supporting the protection and development of Intellectual Property (IP) in Indonesia. 2025 has been declared the Year of Copyright and Industrial Design, marking a new strategic initiative to strengthen Indonesia’s IP ecosystem. This policy not only aims to raise awareness of the importance of Copyrights and Industrial Designs but also to create a more conducive environment for businesses and investors, both domestic and international.   This declaration is based on several initiatives and policies implemented by DGIP over recent years. After the 2024 Year of Geographical Indications, DGIP recorded a significant increase in IP applications, demonstrating heightened public awareness of the importance of IP protection. With the declaration of the Year of Copyright and Industrial Design, DGIP aims to continue this positive trend, particularly by increasing the registration of Copyrights and Industrial Designs.   DGIP has set ambitious targets, with the Director General of Intellectual Property aiming for increased Non-Tax State Revenue (PNBP) for 2026: IDR 28,156,750,000 from Copyrights, IDR 354,753,680,000 from Trademarks, and IDR 529,167,083,000 from Patents and Trade Secrets.   DGIP’s Achievements in 2024 As a foundation for 2025, DGIP achieved several milestones during 2024:   Increase in Intellectual Property Applications DGIP recorded a significant increase in IP applications, including Copyrights, Industrial Designs, and Geographical Indications. In 2024, more than 15,000 Copyright applications were recorded, a 20% increase compared to the previous year. DGIP also received approximately 5,000 Industrial Design applications, reflecting a 15% growth. Furthermore, 50 new Geographical Indication applications were filed, indicating rising public awareness of protecting local wealth-based products. Launch of the 2025-2029 National Geographical Indications Roadmap This strategy aims to strengthen the management and preservation of Geographical Indication-based products, providing direct economic benefits to local communities. Enhanced Services and Transparency Through various initiatives, including the 2024 IP Program Financial Coordination Meeting, DGIP improved service efficiency, especially by expediting IP registration processes to enhance user experience. International Collaboration DGIP successfully established partnerships with international organizations to strengthen IP protection in Indonesia. These collaborations included training, capacity-building for human resources, and promoting Indonesian IP products in global markets. Key IP-Based Regional Programs This initiative encourages the development of IP-based regions to support sustainable economies, enhancing the competitiveness of local products in international markets. These programs range from the Development of Geographical Indications-Based Local Products, Creative Economy Zones Based on IP, to IP-Based SME Assistance.   Strategic Policies Supporting the Year of Copyright and Industrial Design To ensure the success of this initiative, DGIP has formulated several strategic policies and measures:   Updating the 2024-2029 Strategic Plan During the Strategic Plan Update meeting in Bogor in December 2024, DGIP designed data-driven programs to anticipate future needs and challenges. This step ensures that policies related to Copyrights and Industrial Designs align with global dynamics. Strengthening Services and Financial Management Through the 2024 IP Program Financial Coordination Meeting, DGIP focused on improving services and the potential for Non-Tax State Revenue (PNBP). Efficient financial management has become a priority to support optimal operations, particularly in expediting the registration and protection of Copyrights and Industrial Designs. IP-Based Regional Programs DGIP launched flagship programs that utilize IP-based regions to support sustainable economies. This approach aims to enhance the competitiveness of local products with IP value in global markets, providing direct economic benefits to communities and businesses. 2025-2029 National Geographical Indications Roadmap While focusing on Geographical Indications, this roadmap serves as an example of how DGIP designs comprehensive strategies for IP management. Similar approaches are expected to be applied to Copyrights and Industrial Designs, emphasizing preservation and innovation.   Positive Impacts for Businesses and Investors Through these policies, DGIP not only strengthens Indonesia’s IP ecosystem but also sends positive signals to international businesses and investors. These conducive conditions include:   Faster Services: Improved speed and transparency in IP recordation, registration, and protection processes.   Legal Certainty: Structured policies provide better protection for rights holders.   Global Competitiveness: Strengthened IP-based regions allow local products to compete more effectively in international markets.   You might also want to read: Fighting IP Crimes: Indonesia’s IP Office Task Force Destroys IDR 5.35 Billion Worth of Counterfeit Goods!   Despite the many initiatives launched, challenges remain, such as low public awareness of the importance of IP protection and the need for adequate infrastructure. However, with DGIP’s commitment, 2025 is expected to be a monumental year for strengthening Copyright and Industrial Design protection in Indonesia.   The declaration of the 2025 Year of Copyright and Industrial Design is DGIP’s tangible step in solidifying Indonesia’s position as a country that supports Intellectual Property protection. This policy aims to raise awareness of the importance of Copyrights and Industrial Designs and create a more conducive environment for businesses and investors, both domestic and international. Should you need more information on Copyright and Industrial Design protection in Indonesia, please contact us at [email protected].

Fighting IP Crimes: Indonesia's IP Office Task Force Destroys IDR 5.35 Billion Worth of Counterfeit Goods! - AFFA IPR

Fighting IP Crimes: Indonesia’s IP Office Task Force Destroys IDR 5.35 Billion Worth of Counterfeit Goods!

Event, Intellectual Property, Trademark, Industrial Design1 Comment

The Indonesian Intellectual Property (IP) Task Force, a cross-ministerial special task force of the Republic of Indonesia, consists of the Directorate General of Intellectual Property (DGIP), the Directorate General of Customs and Excise (DGCE), the National Agency of Drug and Food Control (BPOM), the Ministry of Communication and Digital (Komdigi), the Criminal Investigation Department (Bareskrim) of the National Police, and the National Cyber and Crypto Agency (BSSN). On December 12, 2024, the task force symbolically destroyed a number of products associated with violations of 12 Trademarks and Industrial Designs.   During a press conference, the Director General of Intellectual Property, Razilu, stated: “This destruction serves as a strong message from the DGIP that there is no room for Intellectual Property violations in Indonesia.”   At least three key messages were conveyed through the destruction of these products: Deterrence: To provide a deterrent effect on offenders, ensuring they refrain from committing further violations. Both civil and criminal legal actions can be enforced against them. Creator and Owner Protection: To assure creators and IP owners that their works are protected, fostering an environment where they can continue innovating. Public Awareness: To urge the public never to buy counterfeit or fake goods at low prices, as these products can adversely affect health, employment, and the environment.   The destroyed products, valued at IDR 5.35 billion, included the following: LEGO (toys): Worth over IDR 1 billion, from 110 items. Comotomo (baby bottles): Worth over IDR 500 million, from 888 items. Mimi White (hand and body lotion): 216 items. MT NG Shan (drill bits): 2,000 pieces. Louis Vuitton (women’s bags, wallets, and belts): 10 items. Christian Louboutin (women’s shoes): 2 pairs. Tokai (lighters): 5 boxes. Orion Choco Pie (snack/biscuits): 50 boxes. Honda (spare parts): 30 boxes. Honda (generators): 30 units. Harley Davidson (apparel accessories, umbrellas, and wallets): 600 items. Food Packaging (Industrial Design): 30 boxes.   It is important to note that the products classified as IP violations are not limited to counterfeit goods but also include goods illegally entering the Indonesian market. Under the law, smuggled goods that bypass official channels, fail to adhere to applicable import procedures, and are subject to objections by the official license holders of the relevant trademarks are subject to enforcement actions.   Given the complex and extensive scope of IP  violations, cross-sector enforcement is required. The specific roles of the involved institutions are as follows: DGIP: Monitoring, supervision, preventive measures, mitigation strategies, and enforcement of IP laws. DGCE: Addressing the importation of goods suspected of infringing IP rights. BPOM: Managing the distribution of food and pharmaceutical products that are suspected of infringing IP rights and endangering public health and the environment. Komdigi: Handling complaints and requests for blocking websites related to goods and/or services deemed to violate IP rights. Bareskrim Polri: Coordinating communication and collaboration for law enforcement from the central office to its units across Indonesia. BSSN: Monitoring IP violations in cyberspace and assisting in handling IP infringements that occur in the digital realm.   You might also want to read: Unraveling the Global Complexity of IP Crime: Money Laundering and More!   Each year, the average number of reports on IP violations is around 50 cases, with the majority involving Trademark, Industrial Design, and Copyright infringements. The active role of Komdigi has also significantly contributed to blocking 414 websites infringing Copyrights based on 16 requests. However, considering that the IDR 5 billion in damages mentioned earlier came from only 12 cases, this can be seen as just the beginning or the tip of the iceberg in the enforcement of IP laws in Indonesia.   Therefore, the participation of the five key components of the nation—Government, Academics, Private Sector, Society, and Media—is expected to continue supporting efforts to create a better Intellectual Property climate in Indonesia.   With increasing public awareness of the importance of Intellectual Property, there will also be positive impacts on the national economy and Indonesia’s investment climate in the global arena.   Should you need more information regarding Trademark protection and other Intellectual Property matters in Indonesia and abroad, feel free to contact us via email at [email protected].

FAQs: The Legal Framework of Trademark Protection in Indonesia - AFFA IPR

Frequently Asked Questions about the Legal Framework of Trademark Protection in Indonesia

Intellectual Property, Trademark

Prevailing Laws and Regulations Q: What is the primary legislation governing Trademarks in Indonesia?   A: Law No. 20 2016 on Marks and Geographical Indications (the Trademark Law) is the primary law concerning Trademark in Indonesia. Several provisions in the Trademark Law were then amended under the Law No. 11 Yeat 2020 in Job Creation, and then further amended under the Law No. 6 Year 2023 on the Enactment of a Replacement Government Regulation in Lieu of the Law No. 2 Year 2022 on Job Creation as Law.   Moreover, there are several by-laws that regulate more specific matters, such as, but not limited to:   Government Regulation No. 28 2019 concerning Types and Tariffs of Non-Tax State Revenues Applicable to the Ministry of Law and Human Rights. This regulation 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 of the Republic of Indonesia. Government Regulation No. 22 2018 concerning International Registration of Marks Under the Protocols Relevant to the Madrid Agreement Concerning the International Registration of Marks. This regulation covers all aspects of international registrations filed to or from Indonesia. Government Regulation No. 90 2019 concerning The Trademark Appeal Commission, which was established on 29 August 1995 concerning Procedures for Application, Examination and Settlement of Appeals at the Mark Appeal Commission. The Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 12 2021 concerning Amendments to the Ministry of Law and Human Rights of the Republic of Indonesia Regulation No. 67 of 2016 concerning Trademark Registration Decree of the Director General of Intellectual Property in the Field of Trademarks. The ministerial regulation prescribes, among others, the requirements of registration, classes of goods and services, rectification of issued certificates and recordals.   International Law Q: Which international Trademark agreements has Indonesia signed?   A: Indonesia has ratified various agreements concerning Trademarks, such as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the Trademark Law Treaty and the Paris Convention.   Regulators Q: Which government bodies regulate the Trademark Law?   A: The Directorate General of Intellectual Property (DGIP) under the Ministry of Law and Human Rights of the Republic of Indonesia is the relevant body that administrates the protection of all Intellectual Properties, including Trademarks. The DGIP goes beyond regulating and implementing the law, it is also responsible for proactively disseminating the information pertaining to the importance of IP protection through various means, such as podcasts, YouTube videos, Instagram posts and seminars conducted around Indonesia. Should you need more information regarding Legal Framework of Trademark in Indonesia, please do not hesitate to contact us via [email protected].

FAQs: Patent Office Proceedings in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Office Proceedings in Indonesia

Patent, Intellectual Property

Patenting Timetable and Costs Q: How long does it typically take, and how much does it typically cost, to obtain a Patent?   A: The process of registering a patent in Indonesia involves several steps, including jling a Patent application, publication, examination and grant. The general process is as follows:   Filing a Patent Application: A Patent Application must be filed with the Indonesian Intellectual Property Office (DGIP). For PCT applications, the deadline will be 31 months from the earliest priority date. Late filing is possible with additional official fees.   Publication: The publication period in Indonesia lasts for six months. After the publication stage has been passed, the application will proceed to examination (as long as the applicant has filed for the substantive examination request).   Examination: After filing, the Patent Office will examine the Patent Application to determine if it meets the requirements for grant. This process may involve a review of the prior art and an examination of the novelty, inventiveness and industrial applicability of the invention.   Amendment: If the Patent Office finds that the Patent Application does not meet the requirements for grant, the applicant may be given an opportunity to respond to objections raised and amend the application to address any deficiencies. This can be in the form of an office action.   Grant: If the Patent Office determines that the Patent Application meets the requirements for grant, a Patent will be granted and the applicant will be issued a notice of allowance or grant and then will be followed with the issuance of a Patent Certificate, but very often the certificate is not issued for months or even years.   Maintenance: Once a patent has been granted, the applicant must take steps to maintain the Patent, including paying maintenance fees and renewing the patent as required. The first annuity payment must be paid within six months of the notice of allowance or grant.   On average, it takes approximately three to five years from filing to registration. We cannot comment on the costs given the variable conditions that affect it.   Expedited Patent Prosecution Q: Are there any procedures to expedite Patent Prosecution?   A: The DGIP, under the Ministry of Law and Human Rights of the Republic of Indonesia, has established various procedures under which the examination of a Patent Application may be accelerated. Under these procedures, the DGIP will advance an application out of turn for faster examination if the applicant files the following special requests through the ASEAN Patent Examination Co-operation (ASPEC) programme, the Indonesia – Japan Patent Prosecution Highway (PPH) programme, Indonesia – South Korea PPJ programme, or simply by providing the examiner in charge the granted corresponding claims from other patent offices (eg, the US Patent and Trademark Office (USPTO), Japan Patent Office (JPO), European Patent Office (EPO) and others).   ASPEC   ASPEC is a regional Patent work-sharing programme that involves nine ASEAN member states. The programme allows each participating Patent Office to share search and examination results to help applicants obtain corresponding Patents faster and more efficiently. The goal of ASPEC is to reduce duplication of search and examination work and produce high-quality examination reports. By obtaining examination results from other countries in the participating Patent Offices, applicants can accelerate the examination process, as long as the corresponding claims are the same.   When requesting ASPEC, the Patent Applicant is required to submit an ASPEC request form to the second Patent Office. The form must be accompanied by the following documents: a copy of the search and examination (S&E) report or the examination report (minimum documents) of a corresponding application from the first IP Office, and a copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the first IP office to be allowable or patentable.   For a Patent Cooperation Treaty (PCT) ASPEC request, the Patent Applicant is required to indicate that the request is for PCT ASPEC in the ASPEC form. The completed ASPEC request form shall be submitted together with the following documents:   a copy of the written opinion international preliminary examination report (WO/ISA, WO/IPEA or IPER) established by an ASEAN International Searching Authority or International Preliminary Examining Authority (ASEAN ISA/IPEA) (‘minimum documents’) relating to a corresponding application from the first IP Office, and a copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the jrst IP office to be allowable or patentable.   The request to utilise ASPEC can only be done after the application has finished the publication stage. Based on our experience, the time it takes from filing the ASPEC request until the issuance of the decision to grant will not be more than 12 months – a great improvement in lead or pendency times compared to the processing time for non-ASPEC (or PPH) Patent Applications in Indonesia.   Indonesia – Japan Patent Prosecution Highway (Indonesia-Japan PPH)   The Japan Patent Office (JPO) and the DGIP initiated a Patent Prosecution Highway Program (PPH) on 1 June 2013, and since then, the PPH has been chosen by many applicants who have previously filed their base applications in Japan as the method of accelerating the Patent Applications in Indonesia. The PPH request can be filed at any time as long as it is before the deadline to request the substantive examination stage. There will be an official fee of 5 million rupiahs incurred for requesting the PPH acceleration programme.   When it comes to the requirements, the DGIP will require the applicant to provide the following documents to start an accelerated examination process: all formality documents required to file the application have been submitted and the notice of formality documents completion issued by the DGIP; proof of payment to file a substantive examination request; the application should have passed the publication period of six months; completed PPH form; corresponding claims that should be equivalent or less compared to the claims granted by 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…

The Benefits of IP Customs Recordation for Your IPs in Indonesia - AFFA IPR

The Benefits of IP Customs Recordation for Your IPs in Indonesia

Intellectual Property, Trademark, Copyright

Recently, the Directorate General of Customs and Excise of the Republic of Indonesia (DGCE) has taken widespread action against tons of illegal food to protect consumers and the Indonesian food industry. Because the ingredients of food imported illegally are unknown, it can endanger residents and disrupt the distribution of local food producers. But did you know that Customs and Excise can also deter illegal goods that violate Intellectual Property abroad or within the country? Because DGCE is part of the Task Force together with the Criminal Investigation Agency of the Republic of Indonesia Police (Bareskrim Polri), the Indonesian Food and Drug Authority (BPOM), and the Directorate General of Informatics Applications (Ditjen Aptika), which supports the performance of the Directorate General of Intellectual Property (DGIP) in enforcing Intellectual Property Law in Indonesia. Enforcing this law is a collective homework because Indonesia is still on the list of world countries with serious Intellectual Property violations (along with Argentina, Chile, China, India, Indonesia, Russia, and Venezuela), as released by the United States Trade Representative (USTR) in the 2023 Priority Watch List Special 301 Report. A few weeks ago, DGCE conducted outreach to the public so that the wider community, especially Intellectual Property (IP) owners, could take advantage of this service. So, if illegal products are found crossing state borders, IP owners, especially copyright and trademark owners, will be assisted in the deterrence process. But before that, you must first carry out the recordation process on the DGCE website. For those of you who are still unfamiliar with the term “deterrence”, this word has 2 (two) meanings, namely: Delaying the release, loading, or transportation of excisable goods and/or other goods related to excisable goods; Prevent the departure of means of transport.   The Benefits of IP Customs Recordation in DGCE The recordation process is an activity to enter your IP information into the DGCE customs database, with the following benefits: Action at Ports or Borders; Especially if the quantity of goods smuggled is very significant. Effective and efficient deterring before goods that violate IPR are distributed to the domestic market. Protecting IP Owners’ Business Processes; Products are protected from counterfeiting or infringement attempts. Maintain consumer confidence in products on the market. Maintaining brand reputation from low-quality counterfeit products. Macro Aspects; Increasing investor confidence, both domestic and foreign. The government can restore international trust in the seriousness of eradicating counterfeit products in Indonesia.   The Authority of DGCE DGCE has two schemes for the enforcement of Intellectual Property Law: Judicial Scheme that applies to all IP regimes: DGCE may impose a temporary suspension until a physical examination. However, DGCE’s position here is passive because it must wait for a temporary suspension order from the Commercial Court, where the Rights owner must carry out the initiative without any prior obligation to record it on the DGCE site. Ex-Officio Scheme for Trademarks and Copyrights: After the rights owner carries out the recordation process with the DGCE, the process of deterrence, temporary suspension, and physical examination can be carried out proactively by the DGCE.   Conditions for IP Customs Recordation at DGCE As the owner or right holder, you must submit a written application accompanied by the required documents by Minister of Finance Regulation (MFR) Number 40/pmk.04/2018 concerning Recording, Deterrence, Guarantee, Temporary Suspension, Monitoring and Evaluation in the Context of Controlling the Import or Export of Suspected Goods Constituting or Originating from the results of Violations of Intellectual Property Rights, to the Director of Action and Investigation at the DGCE Head Office and submitted electronically via the CEISA IPR application which can be accessed on the user portal.   Then you are required to prepare the following documents as attachments: Copy of Company Deed of Establishment and Latest Amendments Copy of Taxpayer Identification Number (NPWP) Copy of Trading Business License (SIUP) or Company Registration Certificate (TDP) Copy of Domicile Letter Copy of Trademark Certificate/ Registration or Copyright Recordation Letter issued by DGIP Information regarding product authenticity characteristics (mark, product appearance, packaging, distribution route, etc.) Statement letter as regulated in Appendix B – MFR No. 40/PMK.04/2018 Proof of transfer of rights (if rights are transferred) Information on parties granted the right to import/export Other information(s) required by DGCE   Involve Internal or External Examinator Apart from that, you must appoint one or more examiners who are experts on the product, who can come from within or outside the company, and who understand the Trademark or Copyright of the item to be recorded. If the goods recorded are related to the Trademark, the appointed Examiner(s) must understand the characteristics of product authenticity, such as the mark, goods, logo, product appearance, packaging, distribution, and marketing routes, as well as the number of products marketed in that area. However, suppose the item being recorded is related to Copyright. In that case, the examiner must understand the characteristics or specifications of the copyrighted work in the fields of science, art, literature, or related rights being created.   DGCE Research Procedure Approximately 30 Days All requirements will then undergo formal and material research by DGCE, including validating the data with DGIP. If this recordation is approved, it will be valid for 1 (one) year and can be extended. The entire recordation process is free of charge and only takes approximately 30 days. However, if you are a Trademark Owner or Copyright Holder who is a foreign company and domiciled abroad, you must have a business entity domiciled in Indonesia. DGCE has successfully disposed of more than one million pens, three million razors, 72 thousand more cosmetics, up to 160 rolls, and 890 cartons of sandpaper in the last four years. This number is not much because not many Trademark Owners and Copyright Holders take advantage of this feature. Therefore, if you own a product with a high cross-border risk, we recommend immediately recording it at DGCE.   If you still have questions or need further information regarding Intellectual Property Customs Recordation at the Directorate General of Customs and Excise, do not hesitate to…