IP Licensing for Restaurants & Theme Parks: An Investment or a Burden? - AFFA IPR

IP Licensing for Restaurants & Theme Parks: An Investment or a Burden?

Intellectual Property

Indonesian laws regulate the granting of Exclusive Rights over Trademarks, Industrial Designs, or Copyrights, where only the owner and/or creator have the right to derive economic benefits from the Intellectual Property (IP). Therefore, it can be concluded that any restaurant, venue, or theme park wishing to utilize such IP must obtain permission. But how does it work in practice?   However, it is still common to find restaurants and venues utilizing well-known IP elements such as characters from popular animations, superheroes, or movie themes without official permission from the owner. For example, themed restaurants inspired by popular movies or series that use their names and menu concepts, or amusement parks displaying statues of characters without a license. While these may appear attractive and draw visitors, such actions violate the Exclusive Rights of IP owners and may lead to legal lawsuits.   The Importance of Licensing IP Usage   Such violations harm IP owners and create an unhealthy business environment. Entrepreneurs who disregard Intellectual Property Rights neglect the significant investments made by IP owners in creating their works, from the creative process to marketing efforts.   So, what’s the solution? It’s as simple as contacting the IP owner and obtaining usage rights formalized in a Licensing Agreement. This ensures legal usage of the IP and helps determine if another party in Indonesia has already been granted a license, potentially allowing further collaboration for authorization.   You might also want to read: Indonesia’s IP Odyssey: Unraveling the Ins and Outs of IP License Agreement Recordal   By obtaining a license, you can get the following three key benefits:   Avoiding Legal Risks Licensing protects businesses from lawsuits that may result in hefty fines or even closure. Enhancing Credibility Official licensing demonstrates a commitment to ethical business practices and respect for others’ rights. Building Long-Term Partnerships IP owners often support the marketing of licensed businesses, providing strategic advantages for expanding into international markets. You could even become the trusted partner for operating this business in Indonesia.   The Public’s Role in Respecting IP   Besides business operators, the public also plays a crucial role in safeguarding Intellectual Property Rights. As consumers, we should be more critical when choosing places to visit. If you encounter a restaurant, venue, or theme park using a well-known IP without authorization, consider the following:   Avoid Visiting Supporting businesses that violate IP rights only worsens the problem. Report Violations You can report violations to the relevant authorities or directly to the IP owner to initiate legal action.   The easiest way to verify whether a venue has a formal collaboration with the IP owner is by checking for the © “IP Owner’s Name” label on its publication. Because obtaining such authorization often involves significant effort and cost, businesses are likely to display this label. Not only does it reflect official usage, but it also serves as a badge of pride that their business has earned the trust of a major IP name. Licensed businesses also freely promote such partnerships without fear of secrecy.   Criminal Sanctions for Unauthorized IP Usage   Running a business that uses IP without permission in Indonesia may result in criminal penalties, depending on the type of violation:   Trademark Infringement Anyone who unlawfully uses a trademark identical to a registered one belonging to another party for similar goods and/or services may be subject to: Imprisonment: Up to 5 years. Fine: Up to IDR 2 billion. Copyright Infringement Anyone who unlawfully and/or without permission from the creator or copyright holder distributes a work or its copies for commercial purposes may be subject to: Imprisonment: Up to 4 years. Fine: Up to IDR 1 billion.   For more severe violations, such as piracy, penalties may include imprisonment of up to 10 years and/or fines of up to IDR 4 billion. Furthermore, should you need help obtaining a license for well-known IPs, including drafting proper licensing agreements, feel free to contact us via email at [email protected].

TKDN-Related Sales Restrictions: How Can IP Play a Role in Enhancing its Composition - AFFA IPR

TKDN-Related Sales Restrictions: How Can IP Play a Role in Enhancing Its Composition

Intellectual Property

The Indonesian government recently banned the distribution of the iPhone 16 due to its failure to meet the required Domestic Component Level (TKDN) threshold of 35%. This policy serves as a stern reminder to all local and international manufacturers of the importance of contributing to the development of domestic industries.   However, the iPhone 16 is not the only TKDN-related issue in the spotlight. Previously, the tactical vehicle Maung Pindad, used by “RI 1” (the President), became a success story in fulfilling TKDN requirements. According to Chief of Presidential Staff Anto Mukti Putranto, while 30% of Maung’s components were sourced from Korean and German manufacturers, namely SsangYong and Mercedes-Benz, the remainder was developed locally.   So, who is obligated to comply with TKDN regulations? How can Intellectual Property (IP) certificates help meet these requirements? Let’s dive into the details.   Legal Basis of TKDN   TKDN refers to the percentage of goods or services derived from domestic components in a product, service, or combination of both. This policy is governed by Minister of Industry Regulation No. 16 of 2011, which outlines the rules and methods for calculating TKDN. At least three parties are required to comply with TKDN regulations:   Electronics and Telecommunications Manufacturers: Products like smartphones with 4G/5G technology must have a minimum TKDN value of 35%, as stated in Minister of Industry Regulation No. 22 of 2020 on Electronics and Telematics TKDN Calculation Guidelines. Goods/Services Providers for Government Projects: Under Presidential Regulation No. 16 of 2018 on Government Procurement, all government-procured goods/services must prioritize products with high TKDN values. Strategic Industries: For example, battery electric vehicles (BEVs) are regulated under Minister of Industry Regulation No. 6 of 2022, which specifies development roadmaps, specifications, and TKDN calculation requirements.   Intellectual Property & TKDN Calculation Framework   Factors influencing a product’s TKDN value include:   Type of Product and/or Service: Different products have unique parameters and calculation weights, such as manufactured goods, technology, or services. Local Components Used: The greater the proportion of raw materials or services sourced domestically, the higher the TKDN value.  Contribution of Certification and Local Innovation: Intellectual Property certificates, SNI (Indonesian National Standard), and Halal certification can increase the domestic component value.   It can be concluded that owning IP Certificates, such as Patents, Trademarks, and Industrial Designs, allows businesses to count these as part of the Domestic Component (KDN).   The varying needs of industries and technical specifications result in differing TKDN standards. For instance, electronic products like smartphones require a minimum TKDN value of 35%, whereas strategic industrial products like electric vehicles involve more complex parameters, including design and testing.    Specifically for the iPhone, Apple previously held a TKDN certificate, but its validity period has expired. To renew it, the government still deems the latest investment made in educational facilities insufficient. Apple would need to establish larger manufacturing plants and research development centers to meet the requirement.   Requirements for Meeting TKDN Standards   To obtain TKDN certification, businesses must fulfill the following requirements: Company Legal Documents: Articles of incorporation and business licenses. Intellectual Property Certificates: Relevant patents, trademarks, or industrial designs. Quality Management System: Certification such as ISO 9001:2015. Proof of Local Components: Cooperation contracts with local suppliers or invoices for locally sourced raw materials. Verification Body Appointment Letter: Only independent bodies designated by the Ministry of Industry can conduct TKDN verification.   TKDN as a Strategic National Policy   From its requirements and objectives, TKDN is not just a regulation but a strategic national policy to strengthen domestic industries. Similar policies exist in other countries, such as: Buy American Act in the United States; Industrial and Regional Benefits in Canada; Local Content Policy in Brazil; Local Content Requirement in the European Union; Make in India in India; and China’s Indigenous Innovation Policy in China.   This long-term policy to enhance Indonesian products’ competitiveness in local and global markets deserves our full support.   Does your product meet the required TKDN standards? Don’t hesitate to consult us about registering your Intellectual Property as part of TKDN compliance. Contact us via email at [email protected].

Critical for Indonesia Importers: SNI Must Be Registered by the Trademark Owner and the Licensing Agreement Mus Be Recorded to DGIP - AFFA IPR

Critical for Indonesian Importers: SNI Must Be Registered by the Trademark Owner and the Licensing Agreement Must Be Recorded to DGIP

Intellectual Property, Trademark

One of the primary requirements for obtaining a Certificate of Indonesian National Standard (SNI) is the ownership of a valid and registered Trademark with the Directorate General of Intellectual Property (DGIP), whether by a domestic industrial company or a foreign producer. Products intended to be marketed in Indonesia must meet specific standards, including quality and safety requirements, as enforced through the SNI certification.   Thus, having a registered Trademark is no longer optional but necessary for conducting business in Indonesia. A Trademark is a product’s identity and a critical legal protection tool, especially in a highly competitive market. Securing a registered Trademark is a vital initial step for local and international business operators.   Furthermore, business operators who fail to obtain an SNI Certificate for products that are required to have one may face severe penalties, including administrative sanctions such as product distribution bans and product recalls, as well as criminal sanctions such as fines and the revocation of previously issued SNI certifications.   Requirements for Obtaining SNI To obtain an SNI Certificate, business operators must meet several requirements, including: Ownership of a registered Trademark in the appropriate class (e.g., Class 11 for gas stoves). A quality management system that complies with ISO 9001:2015. Adequate production facilities. Product testing at an accredited laboratory.    Registration Process and Eligible Parties for SNI Registration   Domestic Industrial Companies: Local producers holding a valid business license in Indonesia. Can directly apply for an SNI Certificate via SIINas (National Industrial Information System).  Foreign Producers: Must appoint an Authorized Representative in Indonesia to handle certification processes. Applications must be submitted by the Authorized Representative in Indonesia who holds the Trademark License for the product. Additional documents are required, such as a License Agreement and proof of license recordation with the DGIP.   If you are a distributor or importer, please ensure that the products you import have their Trademark registered in Indonesia by the foreign producer and that you have a License Agreement that has been recorded with the DGIP.   To simplify the process and ensure all documents comply with applicable laws in Indonesia, you can utilize the services of a trusted Trademark Consultant to handle all the necessary steps, including:   Registering the Trademark with the DGIP on behalf of the client (foreign producer). Drafting a License Agreement that adheres to Indonesian regulations. Recording the License Agreement with the DGIP to ensure the license has legal enforceability. Assisting clients in managing the documents required for the SNI Certificate, including consultations related to compliance with SNI standards. Should you need further information regarding Trademark registration as a requirement for obtaining an SNI Certificate, feel free to contact us via email at [email protected].

Trademark Filing and Renewal Fees in the US Rise Starting January 2025: What You Need to Know - AFFA IPR

Trademark Filing & Renewal Fees in the U.S. Rise Starting January 2025: What You Need to Know

Intellectual Property, Trademark

The United States Patent and Trademark Office (USPTO) has announced fee adjustments for Trademark filing and renewal, which will take effect on January 18, 2025. These changes include increases in fees for various Trademark-related services, ranging from USD 50 to 150.   If you own a registered Trademark in the United States or plan to file a Trademark there, here are the details of the fee changes:   Application Fees Current New TEAS Standard* USD 350 n/a TEAS Plus** USD 250 n/a Base application (sections 1 and 44), per class n/a USD 350 Application fee filed with WIPO (section 66(a)), per class USD 500 USD 600 Subsequent designation fee filed with WIPO (section 66(a)), per class                                USD 500 USD 600   Surcharge Fees Current New Insufficient information (sections 1 and 44), per class n/a USD 100 Using the free-form text box instead of the Trademark ID Manual within the Trademark Center to identify goods and services (sections 1 and 44), per class n/a USD 200 Each additional group of 1,000 characters in the free-form text box beyond the first 1,000 (sections 1 and 44), per affected class n/a USD 200   Post-Registration Maintenance Fees Current New Section 9 registration renewal application, per class                                                            USD 300 USD 325 Section 8 declaration, per class USD 225 USD 325 Section 15 declaration, per class USD 200 USD 250 Section 71 declaration, per class USD 225 USD 325 Renewal fee filed at WIPO USD 300 USD 325   Petitions and Letters of Protest Fees Current New Petition to the Director USD 250 USD 400 Petition to revive an application                                                                                           USD 150 USD 250 Letter of protest USD 50 USD 150   Intent-to-Use Fees Current New Amendment to allege use (AAU), per class                                                                            USD 100 USD 150 Statement of use (SOU), per class USD 100 USD 150   If possible, you can file a new Trademark application before January 2025 and take advantage of the services of an experienced Trademark Consultant to calculate all potential costs that may arise afterward. By understanding these costs, you can better prepare in advance, ensuring a smooth trademark protection process in the United States.   Make sure not to miss business opportunities and always secure Trademark protection in the United States by registering your Trademark there.   Should you need more information regarding Trademark registration and protection in the United States, please contact us via email: [email protected].   *) Trademark Electronic Application System Standard: A registration scheme with higher fees, suitable for unique goods and/or services with specific descriptions if they are not available in the existing list provided by the USPTO. **) Trademark Electronic Application System Plus: A standard registration scheme that requires applicants to use the list of goods/services already provided by the USPTO.

WIPO's 2024 Report: Indonesia Ranks Among Global Leaders in Trademarks and Design Growth - AFFA IPR

WIPO’s 2024 Report: Indonesia Ranks Among Global Leaders in Trademarks and Design Growth

Intellectual Property

The World Intellectual Property Organization (WIPO) recently released the World Intellectual Property Indicators 2024 (WIPI) report, highlighting the growth performance of Intellectual Property (IP) in 2023. This report provides a comprehensive overview of global trends in IP, covering Patents, Trademarks, Geographical Indications, Industrial Designs, and Plant Variety Protection. It is a vital reference for governments, entrepreneurs, and innovators to understand their country’s position in the global IP landscape.   China, India, Russia, and Indonesia showcased remarkable growth in this report. China leads with 1.64 million Patent applications, accounting for 46% of all Patent applications worldwide. Regarding Trademark and industrial design applications, China also dominated with 7.4 million Trademark applications (approximately 49% of the total global market) and 58% of global industrial design filings. Similarly, China commanded a 54% share in plant variety protection applications.   How Did Indonesia Perform?   While the global average for Trademark applications declined by 2%, Indonesia bucked the trend with a 10% increase in 2023, trailing only Russia (30%) and Mexico (11%). For industrial designs, Indonesia recorded the highest global growth at 37.3%, far surpassing the global average of 2.8%. In absolute numbers, Trademark applications in Indonesia rose from 122,458 to 152,447, and industrial design filings increased from 4,795 to 6,326. These achievements place Indonesia as a Southeast Asian leader, far ahead of Singapore, Malaysia, and Thailand.   Global Rankings: Where Does Indonesia Stand?   Trademark Applications Indonesia ranks 15th globally, behind: China (7,184,831) United States (739,395) Russia (546,455) India (520,862) EUIPO (436,720) Brazil (427,327) Turkey (398,763) United Kingdom (345,205) Japan (328,559) Iran (327,384) South Korea (314,284) France (263,550) Germany (229,793) Mexico (205,867)   Industrial Design Applications Indonesia ranks 19th globally, trailing: China (826,086) EUIPO (116,884) United Kingdom (81,543) United States (60,022) South Korea (59,454) Turkey (58,084) Italy (37,099) Japan (32,061) France (30,023) Germany (29,663) India (28,168) Spain (14,776) Switzerland (11,391) Russia (10,472) Canada (9,037) Australia (8,798) Iran (7,841) Brazil (7,679)   Creative Industries Drive Growth According to the WIPI 2024 report, Indonesia’s growth in Trademarks is largely fueled by MSMEs and the creative economy, while the textile, fashion, and handicraft sectors primarily drive the surge in industrial design filings The data further indicates that the primary purpose of registering Trademarks and industrial designs in Indonesia is to facilitate exports.   Future Potential and Opportunities As public awareness of IP registration continues to grow, Indonesia holds immense potential to become a hub for innovation and intellectual property in the ASEAN region. Strengthening regulations, increasing public education, and fostering collaboration with the private sector can help capitalize on this momentum.   Should you need more information about the registration and protection of Patents, Trademarks, or Industrial Designs, both domestically and internationally, please contact us via email: [email protected].

Trademark Freeriding Legal Risks and Solutions in Indonesia - AFFA IPR

Trademark Freeriding: Legal Risks & Solutions in Indonesia

Intellectual Property, Copyright1 Comment

According to the Indonesian Dictionary (KBBI), hitchhiking is participating (eating, riding in a vehicle, etc.) without paying. This word is used in colloquial language and is often associated with someone taking advantage of an opportunity without any contribution or cost.   Freeriding Trademarks are also often carried out to take advantage of the popularity of an existing Trademark or even a Well-known Mark to increase exposure and make it easier to sell. For example, opening a ramen shop with a logo that resembles and displays the Ultraman character, opening an amusement park called Squid Game, or opening a car rental business and naming it Gulfstream.   Is this practice justified? What are the legal consequences for the hitchhiker and the actual owner?   A Trademark is the Exclusive Right of the Trademark Holder   Exclusive Trademark Rights are rights granted to Trademark Holders who have been officially registered to use the Trademark in the trade of goods or services. These Exclusive Rights allow the holder to prohibit other parties from using the same or similar Trademark for goods and/or services in the same class without permission.   In Indonesia, Trademarks as Exclusive Rights are regulated in Article 1 of Law Number 20 of 2016 concerning Trademarks and Geographical Indications (Trademark Law), where registered Trademark Holders have Exclusive Rights for a certain period by using the Trademark themselves or granting permission to other parties to use it. Thus, Trademark Holders can prohibit other parties who, without permission, use the same Trademark on the same goods and/or services, Trademarks that are the same as their registered Trademark on the same goods and/or services, or Trademarks that are the same or basically the same as their registered trademark for similar goods and/or services.   Thus, if another party without permission utilizes the existence of a registered Trademark, it can be considered a Trademark violation.   Sanctions for Trademark Violators   For the use of a Trademark without permission, Article 100 of the Trademark Law regulates criminal sanctions of imprisonment and/or fines as follows:   Using the same Trademark: A maximum of 5 years in prison and/or a maximum fine of IDR 2 billion. Using a similar Trademark: A maximum of 4 years in prison and/or a maximum fine of IDR 2 billion.   Legal Ways to Freeriding on Registered Trademarks   Several steps can be taken to use a Registered Trademark in Indonesia legally. These steps are as follows:   Trademark License: The most common step is to obtain a license from the registered Trademark owner. This license is an agreement between the Trademark Owner (Licensor) and the Other Party (Licensee), which grants the Licensee the right to use the Trademark according to the agreed terms. To obtain it, you must contact the Trademark Owner and negotiate and sign a License Agreement determining the scope of use, duration, territorial coverage, and exclusivity. Franchise Agreement: If the registered Trademark is part of a Franchise, you can join it through the available Franchise Agreement. Through this agreement, the franchisor will grant you (the franchisee) the right to use the Trademark and its business system. Usually, a Franchise also involves transferring business knowledge, training, and operational support.You might also want to read: Similar But Not The Same – The Difference Between Franchising and Licensing in Indonesia   Co-Own of a Trademark: Sometimes, two or more parties may agree to use a Trademark together. This requires a detailed agreement and ensures that all parties understand their rights and obligations, including how the Trademark will be managed. If this joint use results in a change of ownership, you must submit the change to the Directorate General of Intellectual Property (DGIP) or through a reliable Trademark Consultant. Trademark Transfer: Another alternative is to purchase the rights to the Trademark from the current owner, the provisions of which are regulated in the Trademark Transfer. Uniquely, the Trademark can be transferred while still in the application process status, provided that the deed of transfer that the notary has legalized is recorded at the DGIP to be fully binding. The transfer must cover all classes of goods and/or services of the transferred Trademark. File a Trademark Cancelation Action: If you believe the previous owner has not used the Trademark you will use for 5 (five) consecutive years, then you can appoint an experienced Trademark Consultant to file a Trademark Cancelation Action with the Commercial Court. The Panel of Judges will then order DGIP to delete the Trademark you wish to use. However, you have also submitted a registration application for the Trademark you want to use.   You might also want to read: A Win for the “WIN” – AFFA Represents Hongyunhonghe Tobacco (Group) Co. Ltd. for a Successful Trademark Non-Use Cancellation in Indonesia Should you need more information about Trademark protection or registration in Indonesia and/or abroad, do not hesitate to contact us through email: [email protected].

The Legal Risks of Selling (Unauthorized) T-Shirts with Popular Character Images - AFFA IPR

The Legal Risks of Selling (Unauthorized) T-Shirts with Popular Character Images

Intellectual Property, Copyright1 Comment

We can still easily find t-shirts with popular character images in small stores, shopping centers, exhibitions, and e-commerce in Indonesia. For those of you who are fans of popular culture from within and outside the country, the presence of t-shirts with characters that you like, sometimes with attractive designs, and also at low prices, is very tempting to buy.   But what if these t-shirts are not licensed or use the images without permission? Are there any legal consequences for the buyer? Here is the discussion from the Intellectual Property law perspective that applies in Indonesia.   Legal Standing   Article 40 of Law Number 28 of 2014 (Copyright Law) has recognized that works of fine art in all forms, such as paintings, drawings, carvings, calligraphy, sculptures, statues, or collages, photographic works, to cinematographic works that are closely related to popular culture, are protected creations. Therefore, the state guarantees that Exclusive Rights consisting of Moral Rights and Economic Rights are given only to the Work’s Creator, Copyright Holder, and/or Related Rights Owner.   This Copyright Law also covers all works or Creations and/or Related Rights products and users of Creations and/or Related Rights products from Indonesian Citizens and non-Indonesian citizens, non-Indonesian residents, or those who are not Indonesian legal entities, with the following provisions: Their country has a bilateral agreement with the Republic of Indonesia regarding the protection of Copyright and Related Rights; or Their country and the Republic of Indonesia are parties or participants in the same multilateral agreement regarding Copyright and Related Rights protection.   The point is that it is inevitable that all works born from popular culture originating from abroad will be recognized as copyrighted in Indonesia. Therefore, all activities of utilization, duplication, distribution, and commercialization must have the permission of the Creator, Copyright Holder, and/or Related Rights Owner. Otherwise, it will be categorized as piracy!   This piracy is regulated explicitly in Article 1 of the Copyright Law, where it is clear that what is meant by Piracy is the unauthorized duplication of Creations and/or Related Rights products and the widespread distribution of the resulting duplication goods to obtain economic benefits.   Penalties for Piracy   Article 113 Paragraph (4) of the Copyright Law states explicitly that “Any person who fulfills the elements as referred to in paragraph (3), which is carried out in the form of piracy, shall be punished with imprisonment for a maximum of 10 (ten) years and/or a maximum fine of Rp. 4,000,000,000.00 (four billion rupiah).”   Terrible sanctions, right? Unfortunately, this criminal threat has not been appropriately socialized because many still do not understand the term piracy. There is even a glorification for successful SMEs by commercializing the use of characters protected by copyright without permission. Finally, this Piracy activity continues rampant without understanding its negative impacts. In fact, Copyright is important to protect.   You might also want to read: Media Missteps: 5 Intellectual Property Blunders to Avoid   5 Reasons Why Copyright is Important Copyright protection is an important part of the legal system that supports economic justice and innovation, with the following details:   Respecting Creators: Protecting copyright ensures that creators of works receive proper recognition and compensation for their work. This provides an incentive to continue innovating and creating. Encouraging Creativity: With copyright protection, individuals and companies are more likely to invest time and resources in creating new works because they can expect a return. Regulating the Use of Works: Copyright gives owners control over how their work is used, shared, or modified, helping to prevent misuse or unauthorized use. Economic Growth: Copyright supports the creative industry, significantly contributing to economic growth through job creation and tax revenue. Consumer Protection: It helps ensure that consumers get original, high-quality products, not imitations or pirated goods.   Therefore, if piracy occurs, all of the above points will be disrupted, from a low appreciation for creators, stagnant creativity, weak distribution supervision, and low product quality to worsening Indonesia’s ranking in the International Intellectual Property Index.   Your Contribution is Needed   If you have already bought a pirated t-shirt, you don’t need to worry about legal sanctions. Because in Indonesia, criminal sanctions are mainly aimed at those who produce, distribute, or sell pirated goods, not at buyers. The Indonesian Copyright Law focuses on parties who actively violate Copyright by reproducing, producing, or distributing works without the permission of the Copyright Holder.   However, although buyers of pirated goods are generally not faced with criminal sanctions, buying pirated goods is unethical because it supports an illegal industry that harms the original Creators and the creative industry. Buying pirated goods can also harm consumers because the goods often do not meet quality and safety standards.   You must realize that choosing legitimate and licensed products is the best way to support Creators and ensure that the products received are safe and of good quality. In addition, buying original products contributes to healthy economic growth and innovation for society.   You might also want to read: Intellectual Property Infringements in Indonesia: A Closer Look at Online Hypocrisy Should you need further information regarding Copyright protection in Indonesia, you can contact us via email: [email protected].

Legal Obstacles to Trademarking Indonesia's National Emblem - AFFA IPR

Legal Obstacles to Trademarking Indonesia’s National Emblem

Trademark, Industrial Design

The Garuda Pancasila, the National Emblem of the Republic of Indonesia, is indeed iconic. The figure of this giant bird that is said to be able to cover the sunlight has been known since the 5th century and has become a symbol of many Hindu kingdoms in the archipelago. So, since it was established and used in various national activities, its presence has always inspired people from each generation to display it in a better and better form.   But is that allowed? Modifying and/or using the Garuda Pancasila as a Trademark in Indonesia? Here is the answer from the perspective of Intellectual Property law.   This large and strong figure, containing the date of the Proclamation of Independence of the Republic of Indonesia on its feathers (17-8-1945), was already in the minds of the nation’s founders when they determined the Garuda Pancasila as the National Emblem. In early 1950, the government of the Republic of Indonesia United (RIS) created a technical committee called the National Emblem Committee under the coordination of Minister Zonder Porto Folio Sultan Hamid II, with the Chairman of the Committee, Muhammad Yamin, and Ki Hajar Dewantara, M.A. Pellaupessy, Mohammad Natsir, and R.M. Ng. Purbatjaraka as its members. President Soekarno then inaugurated it at the RIS Cabinet Meeting on February 11, 1950. Its use was then regulated in Government Regulation No. 43 of 1958 and amended by the enactment of Law of the Republic of Indonesia Number 24 of 2009 concerning the Flag, Language, National Emblem, and National Anthem to implement Article 36A of the 1945 Constitution (UUD 1945) which reads, “The National Emblem is the Garuda Pancasila with the motto Bhineka Tunggal Ika.” For those of you who need clarification as to why the 1945 Constitution already contains the Garuda Pancasila even though the draft was only made in 1950, it is because Article 36A resulted from the Second Amendment in 2000. Previously, only Article 36 contained the following: “The National Language is Indonesian.” However, after the amendment, Article 36A (national emblem), 36B (national anthem), and 36C (further provisions related to the flag, language, national emblem, and national anthem are regulated by law) were presented.   Then specifically, Article 57 of Law Number 24 of 2009 contains the following prohibitions related to the National Emblem: It is prohibited to cross out, write, draw, or damage the National Emblem with the intention of tarnishing, insulting, or degrading the honor of the National Emblem; It is prohibited to use the National Emblem that is damaged and does not match the shape, color, and size comparison; It is prohibited to create a symbol for an individual, political party, association, organization, and/or company that is the same as or resembles the national emblem; and It is prohibited to use the National Emblem for purposes other than those regulated by the Law.   A person who violates the prohibition can be punished with a maximum imprisonment of one year or a maximum fine of IDR 100 million.   Although later, the Constitutional Court, through Constitutional Court Decision Number 4/PUU-X/2012, stated the provisions of Article 57 letter d jo. Article 69 letter c of Law 24/2009 concerning the prohibition of the use of the National Emblem for other purposes and its criminal sanctions are contrary to the 1945 Constitution of the Republic of Indonesia and do not have binding legal force, which means that since then the National Emblem can be used freely to a certain extent to support the spirit of nationalism, but does not apply if it is related to Trademark registration.   So even if you can use the Garuda Pancasila in a design for a t-shirt, cap, pin, or other merchandise that is traded, you still cannot register it as a Trademark. As regulated in Article 21 Paragraph (2)b of the Trademark Law, which reads, “An application is rejected if the Trademark is an imitation or resembles the name or abbreviation of a name, flag, insignia, symbol or emblem of a country, or national or international institution, except with the written approval of the authorized party.”   Legal Problems on the Use of National Emblem in Sports Jerseys   A few months ago, there was a debate regarding the use of the National Emblem on the jersey of the Indonesian Football Team. It is common and natural for a national jersey to change its design every season or every year. When the jersey’s vendor changes, the design and logo containing the National Emblem also changes. During the last change, the latest logo was registered with the name of the owner of the jersey’s manufacturer, and this invited controversy because the public began to understand the existence of Article 21 Paragraph (2) b of the Trademark Law.   However, the public forgets the sentence “written approval from the authorized party.” This controversy ended in June 2024 when the Indonesia Football Association (PSSI), the official parent organization of football in Indonesia, took over all logos applied to the Directorate General of Intellectual Property (DGIP). So, if we open the DGIP database today, both old and new logos have listed PSSI as the Trademark owner.   Thus, PSSI has the Exclusive Right to use the logo, and anyone who wants to use it must have permission from PSSI.   Old (DID2024030570) & New (DID2024006041) Logo of PSSI   It is a bit unfortunate that the logo does not contain the initials of PSSI, so it will cause polemics if other sports organizations want to register a logo that also contains the National Emblem. This means that other parties must file and register it with a different logo, but it still has similarities in principle to the logo filed by the PSSI. Should you need further information regarding Trademark protection or registration in Indonesia and worldwide, please do not hesitate to email us at [email protected].

FAQs: Trademark Enforcement in Indonesia - AFFA IPR

Frequently Asked Questions about Trademark Enforcement in Indonesia

Intellectual Property, Trademark

Trademark Enforcement Proceedings Q: What types of legal or administrative proceedings are available to enforce the rights of a Trademark Owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding Trademark Infringement or an equivalent offence?   A: There are several approaches that need to be considered when commencing the Trademark enforcement proceedings. It is always a prudent course of action to start with sending a cease and desist letter against the infringer to immediately cease the infringing action. Should the infringer does not comply with the requests that have been addressed in the cease and desist letter, then the Trademark Owner has the option to file a criminal action against the infringer to the civil investigator at the Directorate General of Intellectual Property (DGIP) or to the Indonesian Police.   All Intellectual Property disputes are the domain of the Court of Commerce. Apart from invalidations and cancellations of registered marks, any party with legal rights can also seek civil actions through the Court of Commerce, namely to request preliminary injunction and to seek for damages or remedies.   The penalties for infringements are covered by the Trademark Law, namely the following articles:   CHAPTER XVIII  CRIMINAL PROVISIONS Article 100 (1) Every person unlawfully uses any Mark which is identical to registered Mark of other parties for similarly produced, and/or traded goods and/or services, shall be sentenced to imprisonment of up to 5 (five) years and/or fines up to Rp2,000,000,000.00 (two billion rupiahs).   (2) Every person unlawfully uses any Mark which is substantially similar to registered Mark of another party for similarly produced and/or traded goods and/or services, shall be sentenced to imprisonment for up to 4 (four) years and/or fines up to Rp2,000,000,000.00 (two billion rupiahs).   (3) Every person violating the provisions as referred to in section (1) and section (2), whose goods cause health impairment, environment distortion, and/or human deceases, shall be sentenced to an imprisonment up to (10) ten years and/or fines up to Rp5.000.000.000,00 (five billion rupiahs).   Article 101 (1) Every person unlawfully uses any signs which are identical to Geographical Indications of other parties for similar goods and/or products or identical to registered goods and/or products, shall be sentenced to imprisonment up to 4 (four) years and/or up to Rp2.000.000.000,00 (two billion rupiahs).   (2) Every Person unlawfully uses any sign which is substantially similar to Geographical Indications of another party for similar goods and/or products or identical with registered goods and/or products, shall be sentenced with imprisonment up to 4 (four) years and/or :nes up to Rp2.000.000.000,00 (two billion rupiahs).   Article 102 Every Person who trades goods and/or services and/or product which is known or allegedly know that the goods and/or services and/or product constitute criminal acts as referred to in Article 100 and Article 101 shall be sentenced with imprisonment up to 1 (one) year or fines up to Rp200.000.000,00 (two hundred million rupiahs).   Article 103 The criminal acts as referred to in article 100 to article 102 constitute complaint delict.   Procedural Format and Timing Q: What is the format of the infringement proceeding?   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 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 judge’s decision; and issuance of the court’s decision.   For civil procedure, in theory a decision shall be issued within three months. However, in practice, it may take slightly longer due to the extensions requested by any of the parties involved.   Burden of Proof Q: What is the burden of proof to establish infringement or dilution?   A: In Indonesian civil procedure, the burden of proof regarding the facts on which a claim is based lies with the plaintiff. Article 1865 of the Indonesian Civil Code states that anyone who claims to have a certain right or who refers to a fact to support such a right, or who obzects to another party’s right, must prove the existence of that right or that fact. Evidence may comprise written evidence, evidence presented by witnesses, or through inference, confession or oath. In our experience, it is prudent to collect as much diverse evidential material as possible, such as purchases made by mystery shoppers, marketing materials found online and offline, and expert witnesses that may provide substantive statements pertaining to the alleged infringement. Furthermore, written evidence must be presented in the Indonesian language – translated by a sworn translator if necessary.   Standing Q: Who may seek a remedy for an alleged Trademark violation and under what conditions? Who has standing to bring a criminal complaint?   A: In accordance with article 83 of the Trademark Law, the registered mark owner and/or its licensee may file a…