In today’s South-East Asia IPR Basics article, we’ll be continuing our Indonesia series and looking into the rules, regulations and enforcement options for trade marks in Indonesia.
What are trade marks?
A trade mark is a sign, used in trade to distinguish the goods and services of one trader from those of another. Trade marks can take the form of pictures, names, words, letters, figures, a composition of colours, or a combination of these elements. Whilst the primary function of a trade mark is as a badge of origin, they can also, as a result of consistently good products or services gain status as an indicator of quality, or through advertising become a status symbol symbolising a certain quality of life or style.
It should be noted that whilst 3D trade marks are recognised in many European jurisdictions, this is not the case in Indonesia and such marks are best registered as industrial designs if protection is required. Unfortunately, sound and smell trade marks are also not recognised and there is no alternative equivalent methods of protection for such marks.
Trade marks in Indonesia
As with many Asian countries Indonesia operates a ‘first-to-file’ system for trade mark registration. As such it is especially important for companies to register their trade mark in Indonesia early, preferably before the mark has become known to the Indonesian public. This is doubly important in Indonesia as appeal and enforcement regimes are still in development and trade mark piracy and ‘bad-faith’ registrations are common where trade mark owners are slow to register. ‘Bad-faith’ registrations occur where a third party (i.e. not the legitimate owner of the mark) registers the mark first in Indonesia, thereby becoming the legal owner of the mark and preventing the legitimate user-owner from registering it in the territory. Whilst there are some provisions for cancellation of such registration in the case of ‘well-known’ marks, often the company’s only recourse is to buy back the mark, often for a vastly inflated fee.
Geographical indications in Indonesia
The Indonesian Trade Mark Law also provides express protection for Geographical Indications (GIs). GIs are similar to trade marks in that they consist of a sign used on goods to indicate the origin of the product, however, rather than a single producer GIs represent specific goods produced in a defined geographical region which possess qualities and a reputation essentially attributable to that region.
Some EU signs have already been registered as GIs in Indonesia, such as Champagne and Parmigiano Reggiano, paving the way for future registrations. Producers of GI products who are interested in exploiting the Indonesian market should contact the regulatory body for their region for support in applying for GI status in the Republic.
Registering trade marks in Indonesia
The user or licensor of a trade mark may register it for use in Indonesia, whether this be on behalf of a person, several people jointly or by a company. Where this applicant is a foreign party, he or she is advised to engage a local attorney to make the application on their behalf however, agent fees are usually between EUR 150-600. All registrations must be made in the Indonesian language, Bahasa Indonesia and the official fee is approximately EUR 63 for a set of 1-10 item classifications.
Trade marks are registered with the Directorate General of Intellectual Property Rights (DGIPR). Indonesia adheres to the International Classification of Goods and Services which sets out the 45 classes of goods and services in relation to which marks can be registered. It is important to register for all classes which are currently applicable, as well as any which may be used in the future in order to avoid potentially conflicting registrations with opportunists trading on the good name of your mark.
Applications can be sent to the DGIPR directly at:
The Directorate General of Intellectual Property Rights
Ministry of Law and Human Rights
Administrative of the Directorate of Marks and Geographical Indications
Jalan H.R. Rasuna Said, Kav 8-9,
Jakarta Selatan 12190, Indonesia
Tel: +62 21 579 05619
Documents required for registration are as follows:
- Declaration of ownership
- Power of Attorney, where the application is filed by an agent
- Certified copy of priority document, where applicants are claiming an earlier priority date resulting from application in another Paris Convention member jurisdiction.
- Trade mark details
- Full details of the applicant
- Itemised lists of goods/services required for registration
- Representation of the trade mark (in colour if the mark is in colour)
- The meaning of the mark (where applicable)
Once an application is filed, the DGIPR will examine it to check all the appropriate formalities have been complied with, and that there are no conflicting marks. If objections are raised the DGIPR will send a letter which must be addressed within 30 days by the applicant. Objection appeal proceedings can then be initiated which usually carry a fee of between EUR 200-650.
Once the application is accepted by the DGIPR the mark will be published in the Government Gazette. At any time during the three months following publication objections may be made by third parties based on various grounds such as similarity to existing registered marks or other potential infringement issues. If no opposition is raised, the DGIPR will issue a registration certificate. This whole process takes around 2 years to complete. Once registered trade marks are protected in Indonesia for a period of 10 years, after which the mark may be renewed for subsequent 10 year terms indefinitely. Applications for renewal can be applied for up to 12 months before the date of expiry. Once the mark has lapsed however a new application must be made.
Whilst the IP laws in Indonesia are largely seen to be compliant with the Republic’s obligations under the Agreement on Trade-related Aspects of Intellectual Property (TRIPs), the enforcement and border protection systems have yet to develop sufficiently to present an effective control on IP infringement and infringement rates remain high.
SMEs working on a budget should first consider private mediation via legal professionals as a first stop solution for approaching infringers. This is especially attractive for SMEs as it is far less costly and time consuming than alternative actions. Trade mark infringements are often found mixed in with and legitimate, albeit opportunistic trader’s product mix, rather than as an entire business. In such cases threats of legal action can be an affordable alternative to direct action and still result in success.
In theory there is also a usable criminal enforcement system, however in practice such actions have been difficult for foreign companies due to lack of transparency in police procedures, among other factors. A new enforcement agency, the Directorate of Investigation, has recently been set up, however it still lacks the resources required to be effective in combatting piracy issues and generally only handles around 30 cases a year usually restricted to Jakarta.
Trade mark infringements are ‘complaint-based’ crimes, requiring IP owners to file a formal complaint with the police before any action is taken.
Initiating criminal proceedings with the police can also be very costly, with raids costing between EUR 8,000-19,000. As such, these actions should be reserved for targets which would generate maximum publicity, and therefore act as deterrent for other existing and potential infringers. Most raid simply result in the confiscation of the infringing goods with no further action. IP laws provide for substantial fines and prison sentences for infringers, up to EUR 350,000 and seven years imprisonment. However, only minor fines are usually given and there are large inconsistencies in the sentencing practices of criminal courts.
Civil litigation, is even more expensive than criminal raid actions, and is only generally preferred for patent cases as the issues involved can be more complex. However, in the event that civil procedure is used for a trade mark case, good evidence preparation is essential. This can involve evidence from prior raid actions and interviews, surveys, investigator reports, testimonies, video or tape recordings. Overseas evidence will need to be legalised. As discussed in the previous section, the Indonesian judiciary is still fairly inexperienced in handling patent cases and any official case reporting of similar actions in other jurisdictions can also help strengthen a case.
Even if an action is successful however, the legal costs are not recoverable and any awards may not cover the whole cost of the action as principles for calculating damages are not yet established and vary wildly from court to court.