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…

AFFA Represents Trek Bicycle to Win a Trademark Non-Use Cancellation Action in Indonesia

AFFA Represents Trek Bicycle to Win a Trademark Non-Use Cancellation Action in Indonesia

Event, Trademark2 Comments

Since mid-2023, AFFA has been entrusted with handling disputes over the Marlin, Trademark owned by Trek Bicycle Corporation, headquartered in Waterloo, United States. Marlin is Trek’s Trademark for its flagship mountain bike frame.    In its home country, Marlin has been used since 1994 and was registered in 1998 at the United States Patent and Trademark Office (USPTO). However, when it was submitted for registration in 2021 via the Madrid Protocol addressed to Indonesia, this Mark was rejected by the Directorate General Intellectual Property (DGIP) as the Trademark Office in Indonesia because it was deemed to have similarities in its essence or its entirety with the registered identical Prior Mark owned by PT Astra Honda Motor since November 2006, and the protection period would have ended in November 2026.   Based on research conducted by independent investigators, it turned out that PT Astra Honda Motor had never used this Trademark for 3 (three) consecutive years from the date of registration or from the date of last use. Due to this fact, a petition to cancel the Marlin Trademark due to non-use was filed as regulated in Article 74 paragraph (1) of the Trademark and Geographical Indications Law (Trademark Law).   Despite an unfavorable decision at the Court of Commerce level, the team at AFFA filed a cassation to the Supreme Court on December 6 and submitted a cassation memo on December 19, 2023. It was finally decided in a deliberation meeting of the Panel of Judges on Tuesday, March 19, 2024, that the Commercial Court at the Central Jakarta District Court had misapplied the law and ordered the DGIP to remove the Marlin Trademark under the name of PT Astra Honda Motor.   The most important factor is that the Trademark has not been used in the last 3 (three) years based on the non-use investigation report submitted to the Court of Commerce. Apart from that, the similarity in essence or its entirety, an element of Trademark cancellation, does not need to be explained in the petition. Moreover, it is supported by the fact that the Cassation Respondent/Defendant never appeared at the hearings, even though they had been summoned 3 (three) times. Another helpful point that enhanced the chance of obtaining a favorable decision is the fact that Trek Bicycle Corporation also has registrations for the same Mark in various countries, such as Costa Rica, Guatemala, Nicaragua, Panama, Honduras and others.    Contrary to the popular belief that non-use cancellations in Indonesia are impossible, this decision by the Supreme Court is a proof that non-use cancellations are possible, provided that the plaintiff comes prepared with non-use investigation report and ample additional evidence which suggest legitimate interests in the same Mark. Should you need more information about registering your Trademark in Indonesia or abroad, do not hesitate to email us at [email protected].

Kylian Mbappe has Trademarked His Iconic Goal Celebration - Why is it Possible? - AFFA IPR

Kylian Mbappé has Trademarked His Iconic Goal Celebration – Why is it Possible?

Trademark, Intellectual Property1 Comment

Since 2017, Kylian Mbappé has contributed 170+ goals for the Paris Saint-Germain football club. Since then, Mbappé has introduced a celebration pose with crossed arms clamped in his armpits after he scores. Apparently, the pose was registered as a Trademark in the same year and will be protected at least until August 2027.   In theory, since 2008, the World Intellectual Property Organization (WIPO) has recognized the existence of ‘New Types of Marks,’ which divides Trademarks into two types, namely Visible and Non-Visible. For Visible Marks, apart from the various commonly recognized Marks such as names, logos, and holograms, Motion or Multimedia Signs, Position Marks, and Gesture Marks are also recognized. Therefore, this celebratory pose, which includes gestures, can indeed be registered as a Trademark. Source: World Intellectual Property Organization (WIPO)   As a logo, there is a classification system that regulates it to make applications more accessible, as well as providing ample opportunity for each person or company logo to be registered in various appropriate class categories, thereby minimizing monopolistic practices. The classification system is the Vienna Class, which divides logos into 29 categories, 144 divisions, 775 main sections, and 1,112 auxiliary sections. Mbappé’s celebration pose is included in Vienna Class 2.1.8 which includes logos for “Acrobats, athletes, dancers, jugglers, nude men, men practising sports (except those already included in Vienna Classes 2.1.2, 2.1.12, 2.1.14, 2.1.20 and 2.1.21).”   It should be noted that the Indonesian Trademark Office (DGIP) has not adopted the Vienna Class for Figurative Mark, but this does not mean that the Mark cannot be registered in Indonesia. Please take a look at the explanation at the end of this article.   Why Does It Need to be Trademarked?   From the start, Mbappé understood that his unique pose could be registered as a Trademark. Dozens of years earlier, David Beckham, the legendary wing midfielder from Manchester United, had registered his cross-passing pose as a Trademark. The difference is that the logo registered by Beckham is a figure that resembles a human (Vienna Class 4.5.5), not a black-and-white photo of himself as registered by Mbappé. Source: World Intellectual Property Organization (WIPO)   However, just like Beckham, Mbappé also hopes that this Trademark can be used commercially for various goods and/or services of his own. With global achievements and 113 million Instagram followers from all over the world, it is not difficult to imagine that whatever Mbappé sells, especially those with his unique celebration logo, will make a profit. Of course, this profit does not only come to Mbappé but also to manufacturers of clothes, textiles, toys, video games, umbrellas, bags, jewelry, perfume, cosmetics, and even toothbrushes who are interested in getting the license.   Negative Impact on the Athlete’s Image?   If a Trademark is already registered, commercial use of the mark becomes the exclusive right of the mark owner or another party who has officially obtained permission. So, suppose another party uses it without permission. In that case, a civil lawsuit can be filed in Indonesia, or criminal liability can be demanded, with a maximum fine of 2 (two) billion Rupiah or a maximum imprisonment of 5 (five) years.   From the perspective of the fan community, the size of this fine can be scary because a logo that was previously very proud, used as wallpaper on a cellphone, laptop, sticker on a vehicle, or poster in the work space could become incriminating evidence. Will Mbappé’s lawyers or legal team sue and imprison the Fans?   The answer is, of course, no. Because they will mainly pursue pirates who produce, distribute, or sell counterfeit products without permission, this effort is undoubtedly very positive for fans who are truly present to provide support to their athletes. Because the money spent will actually be income for the athletes, not put into the pockets of the pirates, it’s more expensive but legal, you get quality goods, and you’re prouder.   Other Athletes Who Have Done It, Too.   The practice of commercializing athletes’ profiles as Trademarks has been going on for a long time; for example, basketball player Michael Jordan, golfer Jack Nicklaus, and sprinter Usain Bolt are still loved by their fans. With the ownership of this celebration logo, Mbappé is recorded as having 7 registered Trademark variants at the European Union Intellectual Property Office (EUIPO), of which 1 is a Trademark bearing his name, 2 Trademarks contain his favorite slogan, 2 are his logo, and 2 more are a combination of logo and Mbappé’s name.   Lionel Messi (6 Marks) and Cristiano Ronaldo (5 Marks) are other footballers with many active registered Trademarks. However, when David Beckham was still active, he had more Trademarks. Namely, he had 8 registered Trademarks for the logo, name, and several variants of his name with a combination of his back numbers for various products and foundations that he owns. Unfortunately, currently, only one Trademark is still active: BECKHAM.   Can this Trademark be Registered in Indonesia? Referring to Article 1 point 1 of Law Number 20 of 2016 on Trademarks and Geographical Indications (the Trademark Law), a Trademark is a sign that can be displayed graphically in the form of an image, logo, name, word, letter, number, color arrangement, in the form of 2 (two) dimensions and/or 3 (three) dimensions, sound, hologram, or a combination of 2 (two) or more of these elements to differentiate goods and/or services produced by individuals or legal entities in goods and/or services trading activities.   Referring to the Trademark definition, the Trademark submitted by Kylian Mbappé can also be registered in Indonesia as long as no identical or similar Mark has been previously submitted by another party, as regulated in Article 21 of the Trademark Law. Are you interested in registering your name or favorite pose as a Trademark in Indonesia or abroad? Contact us directly via email: [email protected].

[Important Update] Trademark Certificate Required for Textile, Bag, & Footwear Imports in Indonesia - AFFA IPR

[Important Update] Trademark Certificate Required for Textile, Bag, & Footwear Imports in Indonesia

Intellectual Property, Trademark1 Comment

Effective March 10, 2024, in order to increase Trademark protection and control product quality on the market, Indonesian Ministry of Industry (MOI) has implemented a new regulation significantly impacting importers of textiles, textile products, bags, and footwear. This revision to MOI Regulation No. 5 of 2024 Article 23(3) concerns the procedures for issuing technical considerations for these imports.   Significant changes have occurred, including the addition of the following documents, which are mandatory when an importer submits a General Import Permit for Consumption (API-U).   Trademark Certificates issued by DGIP under the Ministry of Law and Human Rights of the Republic of Indonesia; Proof of recordation the License Agreement, Sublicense, and/or Letter of Appointment from the Trademark Owner to the Authorized Representative; and Letter of Appointment to Import from the Trademark Owner or Authorized Representative.   Affected Products Textiles: Fibers, threads, and fabrics; Textile Products: Carpets, other textile floor coverings, clothing, ready-made clothing accessories, and other finished textile goods; Bags: Suitcases, wallets, school bags, sports bags, handbags, and other bags; Footwear: Shoes, sandals, and moccasins.   The general import permit process remains in place, where the General Import Permit for Consumption (API-U) applies to businesses importing for trading purposes. The application process involves a General Importer Verification (VIU) followed by the MOI’s Technical Consideration (Pertek). Obtaining the API-U permit requires submitting the VIU report and Pertek results to the MOT.   Impact on Importers This new requirement poses a challenge for importers who haven’t secured Trademark registration in Indonesia. The lengthy Trademark registration process, typically taking 1-2 years, necessitates immediate discussions with Trademark owners to obtain the necessary certificates and avoid delays in obtaining import permits. Should you need further information regarding this regulation, including how to register a trademark in Indonesia, please contact us via email [email protected].