FAQs: Scope and Ownership of Patents in Indonesia - AFFA IPR

Frequently Asked Questions about Scope and Ownership of Patents in Indonesia

PatentLeave a comment

Types of Protectable Inventions Q: Can a Patent be obtained to cover any type of invention, including software, business methods and medical procedures?   A: The Patent Law was enacted in 2016 and the government eventually issued the much-anticipated Patent examination guidelines in 2019. The current Law differs from its predecessor in that it does not recognise the patentability of various types of subject matter, such as business methods, computer programs per se, new uses for existing products and new forms of existing compounds.   Article 4(c)(3) of the Patent Law excludes the patentability of business methods. Such patentability can, however, be recognised if the computer-implemented business method has technical character through technical means, as further explained by Annex 3, section 2.4 of the technical guidelines.   Article 4(d) of the Patent Law also excludes the patentability of computer programs. However, computer-implemented inventions are patentable, as described in Annex 3, section 2.1 of the technical guidelines. A computer-implemented invention is an invention that is realised using a medium such as a computer: one or more features of the invention are fully or partly realised by a computer program. The distinguishing feature of a computer-implemented invention is a program feature. A computer program is considered an invention if it involves a technical means such as a computer, server, phone, censors or devices, and when run on a computer, it produces a further technical feature outside normal physical interactions between the computer program (software) and the computer. Computer-implemented inventions can be categorised as process inventions (which include methods) and product inventions (which include systems, devices, computer programs, computer-readable storage media, or a combination of these).   Furthermore, article 4(f)(1) of the Patent Law excludes the patentability of new uses of existing products. This also excludes patentability of second or further medical use, which was previously patentable under the former Patent Law (the previous Patent Law was Law No. 14 Year 2001 on Patents). The Swiss-type second medical use format (previously used as an alternative for method-of-treatment claims that were otherwise not patentable under the previous Patent law) is no longer patentable under the current legislation. Several exceptions are discussed in Annex 1, section 5.2 of the technical guidelines, such as new uses for existing products being patentable when the protection of claims is directed to compound X with the feature of disease Y as a limiting or distinguishing feature. In cases of this kind, the claim protection is intended to allow a pharmaceutical industry body to produce a drug X that is indicated to treat only disease Y. The disease feature must be completely novel and inventive, must not involve the same action mechanism as the prior art and must be supported by clinical trial data, in vivo testing or in vitro testing in the description. The dosing regimen, administration time or frequency, patient group and action mechanism of the drug cannot be the distinguishing feature in product-for-new-use claims. An example of a patentable claim would be ‘compound X for use in treating allergy’, where the prior art indicated compound X for use as a pesticide.   Article 4(f)(2) of the Patent Law excludes the patentability of new forms of existing compounds. Based on Annex 1, section 5.3 of the technical guidelines, new forms include chemical chirality such as enantiomers or diastereomers, crystal forms, solvate forms, hydrate forms, salts, prodrugs and metabolites of existing compounds. Patentability can be acknowledged for new forms that result in meaningful e;cacy improvement, which is further explained in Annex 1, section 2 of the technical guidelines. Meaningful efficacy improvement may include increased bioavailability, improvement in stability, increased solubility, decreased toxicity, improvement in safety, improvement in potency, broader activity spectrum, decreased production cost or decreased treatment period. The meaningful e;cacy improvement should be supported by experimental data.   Article 9 of the Patent Law also further excludes the patentability of methods of examination, treatment, medication or surgery applied to humans or animals. This is further explained in Annex 1, section 6 of the technical guidelines. In vitro, ex vivo and in silico methods of examination or diagnosis are still patentable under this law. Non-therapeutic methods of treatment, such as cosmetic treatments, diet or other non-health-related treatments, are still patentable. In vivo methods of examination, therapeutic methods of treatment, methods of surgery and methods of medication applied to humans or animals are not patentable.   Also excluded in Article 9 of the Patent Law are living organisms. An exception is made for microorganisms such as yeast, fungi, bacteria and actinomycetes. An exception also applies to human cells and plant cells. Embryos, seeds, parts of plants, tissues, organs, transgenic plants and genetically altered animals are not recognised as patentable. New strains should be described specifically and the difference from known strains from the same species should be described for the novelty to be acknowledged. A novel microorganism with a different taxonomy is acknowledged as inventive. In relation to living organisms, patentability for essential biological processes for producing plants or animals is also excluded. Non-biological processes or microbiological processes are, however, patentable. Non-essential biological processes are biological processes that need human intervention, such as plant tissue isolation methods. Microbiological processes are biological processes that include microorganisms, such as fermentation. Artijcial insemination, cross-pollination and other processes that can occur naturally without human intervention are not patentable.   Nucleotides such as DNA, cDNA, primers, genes, vectors or transformants are patentable. Patentable nucleotides are nucleotides in the form of isolated nucleotides. Genes can be characterised by a polynucleotide sequence, an amino acid sequence or a mutation code. Vectors can be characterised by DNA sequence, DNA restriction map, molecular weight and number of base pairs. Transformants can be characterised by one host cell and the introduced gene (sequence). The novelty of gene sequences is examined with basic local alignment search tool (BLAST) searches (used in bioinformatics) or National Center for Biotechnology information databases. Gene sequences are acknowledged as inventive when the se’uence activity is different, at least qualitatively.   Patent Ownership Q: Who owns…

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].

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…

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].

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