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].

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].

[Important Update] Japan Adopts Letter of Consent for Trademark Registration - AFFA IPR

[Important Update] Japan Adopts Letter of Consent for Trademark Registration

Trademark

The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” to overcome conflicts with earlier Trademark registrations.   However, the Japan Patent Office (JPO) recently announced that evidence must be provided in addition to a consent letter obtained from the earlier registrant when applying Article 4(4) of the Japan Trademark Law. This evidence must convince the JPO examiner that there is no likelihood of confusion between earlier and junior marks, not only at present but also in the future.   Article 4(4) of the Japan Trademark Law, which is newly introduced in April, states:   Trademark applications will not be rejected under Article 4(1)(xi) as long as the applicant obtains consent from the owner of the cited mark and it is unlikely to cause confusion with the cited owner or its exclusive or non-exclusive licensee when used on goods or services designated under the application.   Trademark Examination Guidelines for Article 4(4) Provides:   The requirement of being ‘unlikely to cause confusion’ must be satisfied at the time of the JPO examiner’s decision and in the future. To satisfy the requirement, the following factors will be assessed: Similarity between marks Recognition of mark Uniqueness of mark Significance of mark (House mark or product brand) Possibility of business expansion Relatedness of goods and service Consumers Trade practices involving actual use of mark Where both marks are identical and used on same goods and service, the examiner will find “likely to cause confusion” in principle. Applicant must provide evidence to demonstrate the unlikelihood of confusion based on the actual use of both marks. For example: Different color, font or combination between literal element and figurative element of respective mark Different position to place the mark or to accompany with other distinctive mark Difference in speific purpose or price of respective goods Different sales channel Different seasons to use the mark Different territory to use the mark Mutual covenants to take necessary actions if confusion is likely to occur between the marks An agreement between the parties to keep the present use or configuration of both marks in the future will be required to strengthen the unlikelihood of confusion in the future.   It is important to note that “Letter of Consent” is not available to Trademark applications filed with the JPO before April 1, 2024, even if they are pending examination.   Similarly, international registrations registered at the World Intellectual Property Organization (WIPO) or subsequently designated to Japan before April 1, 2024, can’t use the consent. Should you need further information regarding Trademark registration in Japan or other countries, please email us at [email protected].

[重要] 向印度尼西亚进口纺织品、箱包和鞋类需提供商标证书 - AFFA IPR

[重要] 向印度尼西亚进口纺织品、箱包和鞋类需提供商标证书

TrademarkLeave a comment

2024 年 3 月 10 日生效，旨在加强对商标的保护并控制市场上的产品质量，印度尼西亚共和国工业部 (Kemenperin) 开始实施对纺织品、箱包和鞋类产品进口有重大影响的新法规。2024 年第 5 号工业部长条例修正案第 23 (3) 条规定了这些产品进口的技术审查签发程序。   重大变化在于增加了进口商申请进口商识别号（API-U）时必须附加的以下文件：   印尼法律和人权部知识产权总局颁发的商标证书； 商标所有人向授权代表出具的许可协议、再许可和/或委任书的记录证明；以及 商标所有者或授权代表的进口委任书。   受影响产品 –   纺织品：纤维、长丝纱线和片状织物； –   纺织产品：地毯或其他纺织地板覆盖物、服装、服装配件和其他纺织成品； –   箱包：行李箱、钱包、书包、运动包、手提包和其他包袋； –   鞋类：鞋履、凉鞋和软皮鞋。   一般进口许可程序仍适用，贸易型进口企业需要获得一般进口商识别号（API-U）。申请程序包括一般进口商核查（VIU），随后由工业部进行技术审议（Pertek）。要获得 API-U，需要向贸易部提交 VIU 报告和 Pertek 结果。   对进口商的影响 对于尚未在印尼注册商标的进口商，这项新要求是重要提醒。 鉴于商标注册过程耗时较长（约 1-2 年），需要尽快与商标所有人沟通，以获得必要的证书，避免在获得进口许可证方面出现延误。   如需有关该法规的更多信息，包括如何在印尼注册商标，请随时通过电子邮件[email protected]与我们联系。

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…

AI-A-Threat-to-Our-Intellectual-Property

AI: A Threat to Our Intellectual Property?

Patent, Intellectual Property, Copyright

AI: A Threat to Our Intellectual Property? AI is a branch of computer science that deals with creating intelligent agents, which are systems that can reason, learn, and act autonomously. AI research has been highly successful in developing effective techniques for solving a wide range of problems, from self-driving cars, medical diagnosis, product recommendations, creating articles or songs based on voice collections, and processing very realistic images.   The sophistication of AI also makes the operation of an application no longer need to be done manually. For example, not by carrying out a series of actions or commands via menu clicks but simply by writing down the command, the AI will carry out the operation automatically. However, this sophistication is open to controversy because the basis of AI’s capabilities comes from a collection of data taken without permission from what is already available on the internet. This is undoubtedly dangerous for Intellectual Property.   In general, AI can harm Intellectual Property in the following 3 (three) ways:   1. AI Can Copy Your Work AI can be trained on a massive dataset of text, images, and code. This means that it can learn to reproduce your work, even if you have taken steps to protect it, such as copyrighting it.   2. AI Can Create Derivative Works AI can be used to create new works based on your original work. For example, an AI could be used to create a new painting based on your existing painting.   3. AI Can Use Your Work Without Attribution AI can be used to create new works that do not give you credit for your original work. This can happen if the AI is not properly trained or if the person using the AI does not understand the importance of attribution.   Recognizing the potential for Intellectual Property infringement that AI-based applications can carry, several countries have taken steps to prevent further disputes. Some of these countries are Japan and the European Union.   AI Copyright Protection for Japanese Artists Agency for Cultural Affairs Government of Japan) on May 30th, the statement “Regarding the relationship between AI and copyright” divides AI use into two stages: First Stage AI can be used for research and education purposes without requiring Copyright permission, but this has limitations if it exceeds recognized necessary limits or harms the Copyright holder’s interests.  Second Stage If AI-generated works are published or sold as reproductions and infringe Copyright laws, the Copyright holder has the right to take legal action, potentially leading to criminal penalties.   The document emphasizes strict penalties for Copyright Infringement through AI-generated works that are almost identical or clearly dependent on existing copyrighted works. Japan plans to raise awareness about these issues through seminars and collaborate with legal experts to proactively regulate commercial AI and protect the copyrighted works of Japanese artists and creators.   This approach signifies Japan’s commitment to shield copyrighted creative work, data, and materials from commercial AI use, potentially impacting AI developers and users aiming to exploit stolen art and creative works for profit. The move marks a potential turning point in the fight against Copyright Infringement by AI, providing more vital protection for artists’ Intellectual Property.   In the next article, we will discuss The Artificial Intelligence Act (AIA) the European Union’s draft for AI regulation related to the protection of Intellectual Property.   If you need further information regarding the registration and protection of Intellectual Property in Indonesia and abroad, don’t hesitate to contact us via [email protected]. Sources: IBM PC Watch  

Enters-Public-Domain-Mickey-Mouse-Stars-in-3-Horror-Films-affa-global

Enters Public Domain – Mickey Mouse Stars in 3 Horror Films?

Intellectual Property, Trademark, Copyright

Enters Public Domain – Mickey Mouse Stars in 3 Horror Films? Mainstream news channels are busy reporting that Mickey Mouse, The Walt Disney Company’s mascot, has entered the Public Domain as of January 1, 2024. As a result, many parties are immediately looking for their fortune by presenting this black mouse in various media. Uniquely, they all have a horror theme!   1. The Vanishing of S.S. Willie Straight released on January 2, 2024, on the Night Signal Entertainment YouTube channel, this is a short film less than 10 minutes long, which assumes that the film “Steamboat Willie” published in 1928, the first film to feature the character Mickey Mouse, is an actual event.   Mickey, Minnie, and other animal characters are displayed in realistic form, covered in retro visuals, but with different names. The horror side is that their story ends tragically at the bottom of the river, contrasting with the cheerful original animated version.   2. Mickey’s Mouse Trap Also released on the same day is a 2-minute trailer for the film, which will be released in March 2024. This time, the story is about a serial killer who wears a Mickey Mouse-like mask and operates in an amusement park.   3. Steamboat Willie The third horror film to utilize Public Domain Mickey is the work of Director Steven LaMorte, who previously directed “The Mean One” (2022), a horror-comedy film inspired by “The Grinch” (2018). Steven admitted that filming of Steamboat Willie will take place this spring, and the concept remains a horror-comedy in the style of The Mean One. Steve confirmed to the media that his work would not violate the law because it would not use the name Mickey Mouse but Steamboat Willie.   4. Infestation: Origins Lastly, Mickey is in a PC game that up to four people can play. Here, you can play as a rat exterminator set in the 80s. But then, you are chased by a monster resembling Mickey Mouse! This game produced by Nightmare Forges can now be ordered on the Steam website, but the official release date has yet to be announced.   What is Public Domain? A work or Creation, including animated films, can be protected by Copyright. Then there is the Copyright Law, which regulates the validity period of Economic Rights, which is a reference for whether we still have to obtain permission from the Creator or Copyright Holder for a Work. If the validity period has passed, the work has entered the Public Domain, and the public can use it freely without asking permission from the Creator.   Why 95 Years Later? The Copyright Law in the United States stipulates that a work’s validity period is during the Creator’s life plus seventy years after the Creator dies. However, this regulation was only applied to all works published starting January 1, 1978. Meanwhile, Steamboat Willie was already present 50 years earlier. That’s why the film still has 95 years of Economic Rights and ends on December 31, 2023. Finally, Steamboat Willie only entered the Public Domain as of January 1, 2024.   Now Everyone is Free to Use Mickey Mouse? Certainly not! Because the only thing in the Public Domain is Mickey Mouse in Steamboat Willie: the Black and White Mickey without gloves. What also needs to be remembered is that as a character, two types of Intellectual Property (KI) are attached to Mickey Mouse: Copyright and Trademark.   If a copyright has an expiration validity period, then a trademark can be renewed every ten years. Mickey Mouse is a registered Trademark still owned by The Walt Disney Company. That’s why none of the works above that use Public Domain Mickey use the name “Mickey Mouse.” They consciously did not use this name to avoid legal disputes. They only dare to use “Mickey” or “Steamboat Willie,” common names not registered by anyone.   So, even though Steamboat Willie has entered the Public Domain, that doesn’t mean you are free to produce and/or sell products that contain colored versions of images or words of Mickey Mouse. The point is that Public Domain doesn’t necessarily make your own Mickey Mouse.   Mickey Mouse Still Owned by The Walt Disney Company Amid widespread news related to the Public Domain, the role of the media is needed to educate people so as not to create new problems. Because incomplete reporting can make many parties who are less aware of IP, including SMEs, subject to warning letters from Disney’s lawyers. They join in on the hype by producing products depicting colored versions of Mickey Mouse and containing the word without realizing the potential for Copyright and Trademark violations.   Remember that Walt Disney is a big company in the IP business. They understand the ins and outs of Intellectual Property law. Apart from that, they also continue to update their IP-based characters and their source of income. That is the only way the validity period of Economic Rights in Copyright can continue to be extended. Steamboat Willy is only one of tens of thousands of works featuring IP-based characters, a source of income for the Walt Disney Company. Missing one will not affect its revenue, which since 2022 will be above USD 80 billion per year.   From Walt Disney, we learn that creating original characters, if managed well, will be more profitable and provide long-term benefits. Instead of making imitation works that take advantage of the momentary hype. The public will also see it as a cheap work or a parody of no quality.   Should you need further information about Public Domain, Copyright, or other Intellectual Property management, please do not hesitate to contact us via [email protected]. Sources:  Coming Soon Variety  

Unveiling-Copyright-Ownership-in-the-Film-Industry-Legal-Perspectives-affa-global

Unveiling Copyright Ownership in the Film Industry: Legal Perspectives

Intellectual Property, Copyright1 Comment

Unveiling Copyright Ownership in the Film Industry: Legal Perspectives There is still often a question among the public about who owns the copyright for a large-scale work, such as a movie. Because movies, especially feature films, involve many derivative works and other interrelated supporting works. Starting from scripts, background music, movie posters, and even a game specifically made to promote the movie.   So, who owns the copyright of all these works? Does the Director hold everything? Producer? Or both of them?   Definition of Copyright According to Article 1 of Law No. 28 of 2014 concerning Copyright (Copyright Law), what is meant by Copyright is the Exclusive Right of the Creator, which arises automatically based on declarative principles after a work is realized in actual form without reducing restrictions by the provisions of statutory regulations.   From the definition above, there are two essential emphases of Copyright as follows: 1. Exclusive Rights, consisting of: Economic Rights The Exclusive Right of the Creator or Copyright Holder to obtain economic benefits from the Work Moral Rights Rights that are eternally inherent in the Creator 2. Arises automatically based on Declarative Principles    No recording or registration is required to obtain protection.   Then, a Creator is a person or several people who produce a creation individually or together. Movies in the Copyright Law are referred to as Cinematography as mentioned in Article 40 Paragraph (1) letter (m), which means moving images, including documentary movies, advertising movies, reportages, or story films made with scenarios, including cartoon or animation films.   Cinematography works can be created on celluloid tape, video tape, video disc, optical disc, and/or other media that allows it to be shown in cinemas, big screens, television, or other media.   Copyright Holders of Movies/ Cinematography Works In general, 3 (three) parties are referred to as Copyright Holders, namely: Copyright Owner/Creator The party who legally receives the rights from the Creator Another party who receives further rights from the party who received the rights   However, if we talk about specific copyright holders for movie-related products, the details are as follows: Movie Related Products Types of Creation Notes Original/ raw/ in-editing process/ final movie. Copyright for Cinematographic Works Creator: Director Copyright Holder: Film Producer Script/ Story Copyright for Written Works Creator: Script/Story Writer Book – If the film is adapted from a book. Copyright for Books/Writing Works Creator: Book Author Adaptation Copyright Holder: Film Producer Book – If the film is adapted into a book. Copyright for Books/Writing Works Creator: Book Author Adaptation Copyright Holder: Book Publisher Background Music (BGM), scoring, soundtrack, sound effects, or other related music works. Copyright of Songs and/or Music Creator: Song Creator (can be assigned to Music Publisher) Related Rights: Musicians, Singers, and Record Producers Movie posters Copyright for Drawing/Painting Artworks Creator: Poster Designer Movie Exhibitions/ advertising/ promotions (photography, banners, etc.) Copyright for Photographic Works, Portraits, Databases, Video Games, Computer Programs, Appearances in the form of Written Works Creator: Photographer, Designer, and Game/Computer Programmer.   Knowing who the creator of the creations above is, if you are involved in them, especially if your position is the creator, you are entitled to Exclusive Rights to cinematographic works, valid for up to 50 (fifty) years from the first announcement.   Benefits of Copyright Recordation Also, please ensure your name is recorded in the Creation Recordation Letter issued by the Minister and in the General Register of Works, which serves as initial proof of ownership of a work and is substantial evidence in court. Even though it is not mandatory, Copyright recordation is beneficial for the following 2 (two) things: Prevent misuse of recorded works and simultaneously prevent losses arising from abuse of said works. Make it easier for Copyright owners to claim royalties for recorded Copyright licenses.   Should you have further questions regarding Copyright and its registration in Indonesia and abroad, do not hesitate to contact us via [email protected]. Sources: Law Number 28 of 2014 concerning Copyright (Copyright Law) Directorate General of Intellectual Property (DGIP)  

Tips-for-Registering-Holograms-as-Trademarks-in-Indonesia-affa-global

Tips for Registering Holograms as Trademarks in Indonesia

Intellectual Property, Trademark

Tips for Registering Holograms as Trademarks in Indonesia Besides Sounds and 3D objects, Holograms can be registered as Trademarks because they are equally recognized as Non-Conventional/Non-Traditional Trademarks. But what kind of Holograms can be registered as Trademarks? Do you interpret the meaning of this Hologram in the same way? Allow us to delve into the discussion.   Legal Basis For Hologram Marks In Indonesia Indonesia recognizes the existence of Hologram Marks through the elaboration of the definition of Trademark as stated in Article 1 Number 1 of Law Number 20 of 2016 concerning Marks and Geographical Indications (the Trademark Law), as follows:   A Trademark is a sign that can be displayed graphically in the form of an image, logo, name, word, letter, number, or color arrangement in 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.   For a Hologram Mark to be registered, Article 4 of the Trademark Law and Article 3 of the Ministry of Law and Human Rights Regulation No.67/2016 require the attachment of a Trademark label in the form of a visual display from various sides.   This visual appearance from various sides is essential because the definition of a Hologram, according to the ‘Great Dictionary of the Indonesian Language,’ is a colored image with three dimensions on a piece of paper so that it appears as if it has arisen. So, the critical point that needs to be paid attention to for Hologram Trademarks is its embossed impression, even though it is flat, and therefore has a different color reflection effect from each side. That’s why the visual description of each side is essential and must be accurate.   Sample of Description on a Hologram Trademark For example, the Hologram Mark registered for PT. PEGADAIAN (Persero) with Application Number JID2020022485. Its appearance is only a circle, but if we look at it from various sides, an emerging effect shows the words and logos contained in it, with different effect colors appearing on each side.   So the description is, “Holograms have five image perspectives. The Front Image displays the entire hologram image (including words and logos). The Top and Right images show the words and logos in various colors. The Bottom and Left images show the words and logos in blue and purple.”   Examples of Other Hologram Marks Registered in Indonesia PT. PANCA PRATAMA INDONESIA GEN TAMEO IMAN SANTOSA Application Number: DID2022083769 Application Number: DID2022104879 Application Number: DID2020060873   From the examples of registered Hologram Marks above, it appears that words, logos, and even facial photos can be submitted as Hologram Marks, provided they do not conflict with administrative and substantive requirements. Furthermore, assuming that the application does not encounter opposition or rejection, it will only take 10-13 months from the application to obtaining the registration number.   So, have you imagined the Hologram Mark that you want to register for your business?   Should you have further questions regarding the requirements and registration of Hologram Marks in Indonesia or abroad, do not hesitate to contact us via [email protected]. Source: Directorate General of Intellectual Property

Patent-Prosecution-Highway-between-Indonesia-and-South-Korea-affa

Patent Prosecution Highway between Indonesia and South Korea

Patent, Intellectual Property

Patent Prosecution Highway between Indonesia and South Korea Starting this December, the Indonesian Patent Office (DGIP) and the Korean Intellectual Property Office (KIPO) began implementing the Patent Prosecution Highway (PPH) program. This program aims to ensure that South Korean companies entering Indonesia can obtain Patent Examinations more quickly, from 40 months to just 18.4 months.   This KIPO PPH collaboration with DGIP is the 10th Bilateral PPH after previously collaborating with IMPI (Mexico – July 1, 2012), IPOPHL (Philippines – May 1, 2015), TIPO (Taiwan – July 1, 2015), EAPO (Eurasia Patent Office – January 1, 2019), IPVN (Viet Nam – June 1, 2019), SAIP (Saudi Arabia – July 1, 2019), INPI (Brazil – April 1, 2020), and MyIPO (Malaysia – December 1, 2020 ), INPI (France – September 1, 2022). It is called Bilateral PPH because it is still a pilot program, before finally becoming Global PPH, as has been implemented in IP5 countries (China, Japan, USA, & EU) and other 24 countries, such as the UK, Singapore, Australia, and Russia.   The Basic Concept PPH  Where an Office of First Filing (OFF) has assessed the patentability of a Patent Application, an Office of Second Filing (OSF) offers the Applicant accelerated examination for the corresponding Application, provided that certain conditions are met. Those conditions include sufficient correspondence in the claims of the two applications and the search and examination results of an OFF being made available to an OSF.   Under the PPH program, the examination results of an OFF are used to expedite the application process in an OSF, thereby reducing the workload and improving patent quality. If deemed patentable by an OFF, the corresponding application is filed in advance for accelerated examination in an OSF.   This PPH program is divided into two categories: PPH using the National Work Products and PPH using the PCT International Products from the KIPO. The following are the procedures for each category:   1. PPH using the National Work Products from the KIPO Applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application filed with the DGIP and satisfies the following requirements under the DGIP-KIPO Patent Prosecution Highway (PPH) pilot program based on the KIPO application.   When filing a request for the PPH pilot program, an applicant must submit a request form to the DGIP.   The offices may terminate the PPH pilot program if the volume of participation exceeds a manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot program is terminated. The PPH pilot program will be in effect for three (3) years commencing on 8 December 2023 and will end on 8 November 2026. However, the program may be extended after a joint DGIP – KIPO review and assessment of the program implementation.   Requirements a. Both the DGIP application on which PPH is requested and the KIPO application(s) forming the basis of the PPH request shall have the same earliest date (whether a priority date or a filing date). For example, the DGIP application (including the PCT national phase application) may be either: an application that validly claims priority under the Paris Convention from the KIPO application(s) except for a complex priority. Example: A. Paris Route B. PCT Route C. PCT Route – Domestic Priority D. Paris Route – Complex Priority E. Paris Route – Divisional Application F. PCT ROUTE an application that provides the basis of a valid priority claim under the Paris Convention for the KIPO application(s) (including PCT national phase application(s)). Example: A. Paris Route   B. PCT Route a PCT national phase application where both the DGIP application and the KIPO application(s) are derived from a common PCT international application having no priority claim. Example: A. Direct PCT Route B. Direct PCT & Paris Route C. Direct PCT & PCT Route D. Direct PCT & PCT Route   b. Patent applications have been initiated in the Office of the KIPO or the DGIP. Patent applications belong to a patent family of which at least the earliest application was filed with the DGIP or the KIPO acting as a national office. The DGIP application which validly claims priority direct PCT applications is also eligible. Example: A. Paris Route BUT the First Application is from the Third Country B. PCT Route BUT the First Application is from the Third Country c. At least one corresponding application exists in the KIPO and has one or more claims that are determined to be patentable/allowable by the KIPO. The corresponding application(s) can be the application that forms the basis of the priority claim, an application derived from the KIPO application that forms the basis of the priority claim (e.g., a divisional application of the KIPO application or an application that claims domestic priority to the KIPO application, example:   or a KIPO national phase application of a PCT application.  Example: A. PCT Route B. Direct PCT Route C. Direct PCT & PCT Route D. Direct PCT & PCT Route Claims are “determined to be patentable/allowable” when the KIPO examiner identifies the claims as patentable/allowable in the latest office action, even if the application is not granted for patent. The office’s action includes: Decision to Grant a Patent Notification of Reasons for Refusal Decision of Refusal Appeal Decision For example, if the following routine expression is described in the “Notification of Reason for Refusal” of the KIPO, those claims are clearly identified to be patentable/allowable. “<Claims which has been found no reason for refusal> At present for an invention concerning Claim, no reason for refusal is found.”   d. All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as patentable/allowable in the KIPO. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the DGIP are of the same or similar scope as the claims in…