Trademarks
The most welcome and important changes relate to well known marks:
- The unequivocal inclusion of the well known (but unregistered) mark as an additional ground for rejecting applications for marks covering the same or similar goods/services. However for dissimilar goods/services, the law states that a future government regulation will regulate this. This is still not yet in force.
- The reintroduction of the Trademarks Office's jurisdiction to refuse renewal and recordal of assignments of trade mark registrations which are identical to, or similar to a well known mark.
Thus brand owners should now find it possible to oppose applications and renewals and cancel marks on the basis that they are made in bad faith and/or similar to well known marks for similar goods.
Unfortunately, many changes in the new law are yet come into force because the relevant implementing regulations have not been drafted. Indonesia has until 2000 to make the relevant provisions "effective" as required by TRIPS.
Copyright
Again to comply with TRIPS, Indonesia signed the Berne Convention with effect from 5th September 1997. In theory this gives protection to all qualifying works irrespective of local recordal. Historically however, enforcement authorities have always been reluctant to act other than official documentary evidence of subsistence of intellectual property rights, which usually meant an Indonesian copyright registration certificate. It remains to be seen how the enforcement authorities will treat enforcement of copyrights under the Berne Convention, which prohibits restrictions such as prior registrations.
The Copyright register, for which there is no substantive examination of applications, had frequently been hijacked by local trade mark owners as a cheaper and faster alternative to the trade marks register. Many foreign brand owners also registered packaging and logo designs. This has resulted in a backlash and in December 1997 a memorandum to the Copyright Office indicated that works acceptable for registration should be restricted as follows:
- Artistic works should not include works containing "elements of trademarks". This was directly intended to stop the registration of trademarks and packaging as copyrights.
- Although the Copyright Office has registered certain "industrial designs" as copyrights, in future this will not include designs used for mass or limited production because such "industrial designs" are not intended to be covered by the Berne Convention.
Effectively then elements of trademarks and designs will no longer be accepted for registration as copyrights, on the basis that they are not artistic works. That commercial graphic works should now apparently be excluded from the registration system will be of concern to brand owners and how this sits with Indonesia's obligations under the Berne convention is yet to become clear. Oddly, in practice, the Copyright Office is still accepting corporate logos for registration.
It is hoped that the copyright position for artistic works will become clearer over the course of 1998. The register can clearly still be used for other types of works, including literary works, textile designs, (primarily a concession to the Indonesian batik and ikat textile industry), and computer software.
Design
An industrial design law is expected to come into effect no later than the year 2000, leaving a substantial gap in IPR protection, given the specific exclusion of designs from copyright protection.
Enforcement
As far as enforcement is concerned, IPR owners should consider the Civil Service Investigation Office. Power was vested in this office by the Trademarks and Copyright Laws of 1987 and 1992 respectively, to investigate infringements, including the right to inspect books, records and other documents, to seize evidence of infringements for use in criminal proceedings and to report the results of investigations to the public prosecutor. Until recently IPR owners were reluctant to use this route, but by 1997, the Civil Service Investigation Office had 18 personnel, 7 working specifically in the field of trademarks. IPR owners may find this an effective alternative to criminal police raids.
General
The economic recession will inevitably lead to an increase in piracy and counterfeiting. But as the laws slowly change, IPR owners are realising that effective enforcement of their rights is becoming possible. Some are finding benefits in the reduction in costs of some IPR actions.
The Indonesian Intellectual Property Association has, since it was formed at the end of 1996, continued to grow. Its aims are to promote the awareness of IPR issues and establish itself as a thinktank for IPR matters in Indonesia. Its annual conference in 1997 was attended by over 150 people.
Nicholas Redfearn is a solicitor admitted in the United Kingdom and an IPR consultant at Rouse & Co International.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
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