Various Intellectual Properties in Football - AFFA IPR

Various Intellectual Properties in Football

Intellectual Property1 Comment

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

FAQs: Patent Enforcement Proceedings in Indonesia - AFFA IPR

Frequently Asked Questions about Patent Enforcement Proceedings in Indonesia

Patent

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

An Analysis of Trademark Law in Indonesia - AFFA IPR

An Analysis of Trademark Law in Indonesia

Trademark

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

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

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

Intellectual Property1 Comment

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

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

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

Trademark1 Comment

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

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

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

Event, Intellectual Property, Trademark

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

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].

[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。

7 Reasons to Not Use Pirated Software - the Indonesian Context - AFFA IPR

7 Reasons to Not Use Pirated Software – the Indonesian Context

Intellectual Property, Copyright1 Comment

Knowing that the original price of “Windows 11 Home” on the Microsoft website is sold for IDR 2,999,999, but on the well-known e-commerce in Indonesia, it can be found for only IDR 20,000, complete with the promise of an activation key that is valid forever. What’s even crazier is that this high price disparity opens up opportunities for other fraudsters to sell pirated software at various prices, from hundreds of thousands of rupiah to millions, which, of course, can deceive buyers who intend to buy genuine products but are constrained by a limited budget.   However, if you are used to buying original or branded products with a large price difference from the original, you will understand that something is wrong. Yes, of course, it can be suspected that the product being sold cheaper is not genuine, used, or even stolen.   Just like using pirated or stolen products, there are several big risks if we continue to use pirated software. Want to know more?   Here are 7 disadvantages of using pirated software:   Fostering Illegal Activities Software piracy is a violation of Copyright Law and can lead to hefty fines or even jail time, primarily if you use it for commercial purposes without permission or reproduce and distribute it unlawfully. There have been many instances where software companies go after those who use the software illegally for commercial purposes. Security Risks Pirated software often comes from untrusted sources and may contain malware or viruses that can harm your computer and steal your data. Lack of Updates You won’t receive security updates or bug fixes for pirated software, leaving your system vulnerable to attacks. No Technical Support If you encounter problems with pirated software, you won’t have access to customer support from the software developer. Harms Software Development Software piracy reduces software developers’ revenue, making investing harder in research and development of new and improved software. This condition will undoubtedly worsen the growth of innovation in our country. Damaging Your Image Imagine if you are in the middle of an important presentation and, while sharing the screen, a notification appears that your laptop’s operating system needs to be revised. Of course, this would create a wrong impression for you and your company. Clients would also judge that you do not uphold Intellectual Property. Inhibiting Foreign Investment It is common knowledge that 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.   Overall, the bads of software piracy far outweigh the goods. There are many affordable and legal software options available, and the risks associated with piracy are simply not worth it. If you require further information regarding the software protection, Copyright recordation or Patent registration in Indonesia and abroad, please do not hesitate to contact us via email at [email protected].

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