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LSM Intellectual Property Law & Practice Update 2017 September

In this edition of LSM IP Update, we cover some of the important developments and interesting issues in Indonesia intellectual property law and practice from recent months.

First, in the wake of recent petition to the US Supreme Court to overturn the ruling over google trademark dispute, we discuss the current treatment of the genericide issue under Indonesian trademark law.

Second, we cover the new implementing regulation on border measures, which recently came into force.

Finally, we briefly discuss the recent implementing regulations on the inventory of traditional knowledge.

 

GENERICIDE IN INDONESIAN TRADEMARK LAW

Is the word “Google” generic? This is the main question that will ultimately determine the fate of the Google brand: is it worthy of protection? The trademark disputes over the term “google” dates to 2012, and the 9th US Circuit Court of Appeals ruled in favor of Google last year and found that “google” may be a verb but it is still a brand it in its own right. The claimant recently filed a petition and asked the Supreme Court of the United States to overturn the ruling.

How does Indonesian law treat this issue?

The 2016 trademark law now allows new applications for generic names derived from so-called ‘genericised’ registered marks (ie, marks that have become generic descriptors of the class of goods (eg, ‘aspirin’ or ‘escalator’) over time through usage and hence lost protection), provided that the applicant adds a distinguishing element to it (Article 22).

By comparison, in the United States the parameters for genericness have been well established through numerous case precedents. Further, while a registered mark may be cancelled under US law due to genericide, the brand does not then become available for registration by other parties.

By contrast, in Indonesia the 2016 law apparently does not require a cancellation proceeding before a genericised mark can be registered. The law also contains no further parameters or guidance on how and when a mark becomes generic, despite the lack of precedents in Indonesian case law. Many famous brands – both local and foreign – have been widely used by the general public in Indonesia to describe certain classes of goods, from food to electronics, which in turn may expose these brands to genericide and make it appear that they are available for registration.

Thus, brand owners – particularly owners of famous brands – must now actively develop the means or enhance existing measures to educate the public (as Lego and Xerox have done) to prevent their trademarks from becoming generic.

IMPLEMENTING REGULATION ON BORDER MEASURES IN INDONESIA CAME INTO FORCE

The long-awaited implementing regulation for the Customs Law provision on control of import or export of goods resulting from intellectual property (“IP”) infringement has recently come into force. Government Regulation No. 20 of 2017 on the control on import or export of goods suspected of infringing IP rights (“GR 20/2017”) provides that the scope of IP rights in the regulation encompasses marks, copyrights and related rights, patent and simple patent, industrial design, integrated circuit layout design, plant varieties and geographical indications (note but recordation only mentions marks and copyrights).

Will Customs act ex officio?

Customs officials may detain goods suspected of infringing trademark or copyright already registered in the Directorate General of Customs & Excise (DGCE) recordation system. In this light, registration of rights with the DGCE—although not mandatory—is necessary for the customs to act ex officio.

Under Article 3 of GR 20/2017, there are two possible grounds for customs to exercise control on import or export of allegedly infringing goods: (1) ex officio or through their authority as customs officials, upon which they can detain suspect goods; and (2) seizure based on a court order, with the exception of (a) goods beyond customs territory; (b) state properties; and (c) goods suspected of violating customs criminal provisions.

Recordation

Right holders need to file a written application for the purpose of recordation at the DGCE by enclosing the following:

  1. Proof of IP rights ownership;
  2. Data concerning genuineness identifying features such as brand, goods, trade name, product appearance, packaging, distribution route, and marketing, as well as the volume of marketed goods within a territory (for trademarked goods);
  3. Data concerning distinguishing features or specifications of copyrights in the field of science, art, literature, or related rights (for copyrighted goods); and
  4. Statement of responsibility letter from rights owner or holder in relation to all consequences arising from the recordation.

The DGCE shall grant or reject the application by no later than 30 (thirty) days upon receipt. If granted, the recordation approval is valid for a maximum of 1 (one) year since the approval date and is renewable.

Detention

The DGCE officer must notify the right holders of imported or exported goods suspected of resulting from trademark and copyright infringement based on prima facie evidence i.e. information gathered from customs inspection or intelligence analysis based on information in the IP recordation system in the DGCE. The right holders must respond and confirm the filing of seizure order request within 2 (two) days after the date of DGCE notice. By no later than 4 (four) days after the confirmation, the right holders must (1) prepare administrative requirements of seizure order request and file the application to the court of commerce; and (2) submit to the DGCE officer an operational cost security deposit in the amount of IDR 100,000,000 (one hundred million rupiah or close to USD 7,500) in the form of a bank guarantee or bond insurance.

Seizure

The right holders may take the initiative to file a seizure order request by filing an application to the court in the jurisdiction of the relevant customs territory where allegedly infringing import or export occurs. The application should include the following:

  1. Prima facie evidence of the IP infringement;
  2. Proof of IP ownership;
  3. Clear description and information on imported or exported goods involved in the seizure request application;
  4. Security deposit.

In case of a seizure order request initiated by the right holders, the claimant must submit an operational cost security deposit in the amount of IDR 100,000,000 (one hundred million rupiah or close to USD 7,500) in the form of a bank guarantee or bond insurance by no later than 2 (two) business days after the DGCE has received the seizure court order.

TRADITIONAL KNOWLEDGE IMPLEMENTING REGULATIONS

Two implementing regulations governing some aspects of traditional knowledge were recently issued.

Minister of Law & Human Rights Regulation No. 13 of 2017 (“MR 13/2017”) sets forth the procedures for inventory of communal IP data, while the Minister of Environment & Forestry Regulation on recognition and protection of local wisdom (“MEF Regulation”) provides the procedures for inventory of local wisdom. Both regulations make a reference to Law No. 11 of 2013 on the ratification of the Nagoya Protocol.

MR 13/2017 defines communal IP as IP in the form of traditional knowledge, traditional cultural expressions, genetic resources, and potential geographical indications, each of which is defined further along with their respective scope. The communal IP inventory system is to be implemented through a data center, which at the very least must list the following information: (i) name, form, and the nature of communal IP; (ii) Custodian; (iii) area/location; (iv) description; (v) documentation; and (vi) other supporting documents. Anyone may file a complaint against a communal IP listed in the data center if (1) the communal IP does not conform to the prevailing social institution in the community; and/or (2) the listed individual(s) has no capacity to act as custodian.

The MEF Regulation contains fairly comprehensive provisions ranging from scope, inventory, procedures of recognition and protection, publication, to dispute settlement of local wisdom. Inventory, verification, and validation of local wisdom are to be carried out by the custodian of local wisdom in coordination with the relevant government institutions. The result shall be published in mass media or through announcements in relevant governmental offices. In absence of opposition against the inventory publication, the Minister, governor, or major (in accordance with their respective authority) shall issue a stipulation concerning the recognition and protection of a local wisdom.

 

Please contact Aga Nugraha from LSM IP Practice Group ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it ) for further information or questions.

This Update is intended for general information purposes only and is not intended to provide, and should not be used in lieu of, professional advice. This Update is protected by copyright and no part of it may be reproduced, licensed, sold, published, transmitted, modified, adapted, publicly displayed, or broadcast through any means or medium, for any purpose by any party without LSM’s prior written consent.

 

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