#本文仅代表作者观点, it does not represent the position of IPRdaily, and reprinting is prohibited without the permission of the author#
Based on the intellectual property environment in Indonesia, this article provides suggestions for enterprises to deal with intellectual property disputes that may be encountered in exhibitions and market development. ”
来源:IPRdaily中文网(iprdaily.cn)
Author: Du Xian, China Council for the Promotion of International Trade Patent and Trademark Office
With the in-depth development of the Belt and Road Initiative, the economic and trade ties between China and Indonesia have been continuously enhanced. At present, China has become Indonesia's largest trading partner and second largest investor. For Chinese enterprises that "go overseas" to Indonesia, going to local exhibitions and engaging in on-site product displays and interactive exchanges has become an important way to promote cooperation. Understanding the local IP environment in advance, conducting risk early warning and prevention, and improving awareness and response initiative are crucial for the smooth expansion of overseas markets. Based on the intellectual property environment in Indonesia, this article provides suggestions for enterprises to deal with intellectual property disputes that may be encountered in exhibitions and market development.
PART01
Intellectual Property Rights and Laws and Regulations
In Indonesia, IP is divided into industrial property and copyright: industrial property includes patents (common patents, summary patents), trademarks and geographical indications, designs, new plant varieties, trade secrets, and layout designs of integrated circuits, and copyright includes copyrights and their neighboring rights.
According to Indonesia's current Patent Law (Law No. 13 of 2016) and Comprehensive Law on Job Creation (Law No. 11 of 2020), patents are granted to new, inventive inventions that can be applied in industry, and summary patents are granted to any new invention, the development of an existing product or process, which has a practical use and can be applied in industry. The term of protection is 20 years from the filing date for ordinary patents and 10 years for simplified patents. The patentee has the exclusive right to exploit his patent and prohibits others from making, using, selling, importing, leasing, distributing, or making the patented product available for sale, rental, or distribution without his consent, or from using the patented process to manufacture the product, and engage in the acts described in the preceding paragraph.
According to the current Indonesian Design Law (Law No. 31 of 2000), a design refers to the creation of a product, goods, industrial product or handicraft that is aesthetically pleasing to the composition of shapes, structures, lines or colors embodied in three-dimensional or two-dimensional form, the composition of lines and colors or the combination of the aforementioned elements, and can be applied to industrially produced products, goods, industrial goods or handicrafts. Design protection in Indonesia is valid for 10 years from the date of filing. The owner of the design has the exclusive right to exploit his design and to prohibit others from making, using, selling, importing, exporting and/or distributing the products for which the design rights have been granted without his license.
According to Indonesia's current Law on Trademarks and Geographical Indications (Law No. 20 of 2016) and the Comprehensive Law on Job Creation, a trademark is composed of signs in the form of images, logos, names, words, letters, numbers, color arrangements, etc., in the form of two-dimensional and/or three-dimensional, sound, hologram, or a combination of two or more of these elements to distinguish the goods and/or services produced by an individual or legal entity in the trade in goods and/or services. Trademark rights are obtained through registration, and direct use of the trademark without registration does not give rise to trademark rights. The term of protection is 10 years from the filing date and can be renewed upon expiration. The trademark owner and/or trademark licensee may sue other parties for damages for the unlawful use of similar or identical trademarks on similar goods and/or services, and/or to cease all actions related to the use of the trademark.
According to Indonesia's current Copyright Law (Law No. 28 of 2014) and the Comprehensive Law on Job Creation, protected copyrights are divided into personal rights, property rights, and neighboring rights: moral rights are the inherent rights of the creator of a work, including the right to sign the work, modify the work, and defend the rights against any act that damages the author's reputation; Neighboring rights are rights related to copyright, including the personal and property exclusive rights of performers, and the property exclusive rights of sound recording producers and broadcasters. The Copyright Law, amended in 2014, added the establishment of a national collective management organization for copyright, according to which a copyright owner or a neighboring rights holder can only receive economic compensation from a third party for the commercial use of its copyright and neighboring rights through a collective management organization.
Including the above-mentioned major intellectual property laws and regulations, Indonesia has a relatively complete intellectual property legal system for the legislative protection of various industrial property rights and copyrights, such as the Integrated Circuit Layout Design Law (Law No. 32 of 2000), the Plant Variety Protection Law (Law No. 29 of 2000), and the Trade Secrets Law (Law No. 30 of 2000). In addition, Indonesia has acceded to international, bilateral or multilateral treaties related to the protection of intellectual property rights, including the Patent Cooperation Treaty, the Madrid Protocol, the Beijing Treaty on Audiovisual Performances, the WIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty, the Berne Convention for the Protection of Literary and Artistic Works, the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Paris Convention for the Protection of Industrial Property, the Convention Establishing the World Intellectual Property Organization, Comprehensive and Progressive Agreement for Trans-Pacific Partnership, EU-Indonesia Free Trade Agreement, Regional Comprehensive Economic Partnership Agreement, ASEAN Framework Agreement on Intellectual Property Cooperation, ASEAN Patent Examination Cooperation Project, JPO-Indonesia Directorate General of Intellectual Property Patent Prosecution Highway (PPH) Pilot Project, etc.
PART02
Dispute Resolution Mechanisms
Intellectual property rights holders may exercise their rights or seek relief against infringers through various channels and procedures such as civil litigation, criminal law, arbitration and other alternative dispute resolution methods.
1. Civil litigation
The right holder may file a civil lawsuit against the infringer in the commercial court. Indonesia has established five commercial courts in Jakarta, Surabaya, Semarang, Medan and Makassar to hear bankruptcy and intellectual property cases. Jurisdiction in infringement cases is generally based on the defendant's domicile. If one of the parties is domiciled outside of Indonesia, a lawsuit must be filed with the Jakarta Commercial Court.
Litigation requires the preparation of a statement of indictment, a power of attorney ad litem, and a valid identity document of the agent, and payment of litigation fees. According to the relevant provisions of the Civil Procedure Law, the commercial court shall make a judgment within 90 days after the case is filed, and if approved by the president of the Supreme Court, it may be extended by 30 days. However, in practice, commercial courts usually make judgments in first-instance IP cases within 9-12 months. After the judgment has been served on the parties, if one party is not satisfied with the judgment of the Commercial Court, it may appeal to the Supreme Court within 14 days from the date of receipt of the judgment. If the court confirms the infringement, the right holder has the right to obtain compensation and request the disposal of the infringing goods. There are two ways to dispose of it: one is to request the destruction of the infringing goods, and the other is to request the court to confiscate the tools and materials used to manufacture the infringing goods.
It should be understood that before a comprehensive review of the factual and legal issues involved in the case and a final and enforceable decision is made, the party injured by the infringement may apply to the commercial court for a temporary injunction due to the specific and special exigencies of the case.
According to the relevant regulations of the Supreme Court of Indonesia, an application for a preliminary injunction requires proof of ownership of the intellectual property, evidence of infringement, a clear description of the alleged infringing product, and a guarantee equivalent to the value of the goods restricted by the injunction. A decision to grant or deny an interim injunction is generally received within one week after a person files an application for a temporary injunction. Once a preliminary injunction has been made, the parties must enforce it, and failure to comply with the interim injunction will constitute a criminal offence. After the enforcement of the interim injunction, the judges of the Commercial Court will hold an inter partes hearing within 30 days and decide to uphold or vacate the interim injunction. If the interim injunction is revoked, the bond paid by the applicant shall be immediately returned to the party bound by the interim injunction. If the interim injunction is upheld, the bond paid must be returned to the applicant, the applicant may claim damages for infringement, and/or the applicant may report the infringement to a police investigating officer or a public investigator.
2. Criminal procedures
After discovering the infringement, the right holder may first request the infringing party to stop the infringement by sending a warning letter. If the infringing party still does not stop the infringement, the right holder can report to the investigator of the Indonesian General Directorate of Intellectual Property or to the police, and the police will carry out a search operation, and then the case will enter the investigation stage. If the right holder submits an application for litigation after the seizure, the police will transfer the investigation case file to the public prosecution department, which will decide whether to initiate a public prosecution in the criminal court. Before filing a lawsuit, the right holder can choose to deal with the infringement dispute by alternative dispute resolution methods such as mediation, negotiation or arbitration, and if none of the above methods can achieve satisfactory results, the right holder can finally choose to file a lawsuit with the court. As it stands, the majority of criminal cases are settled out of court. Intentional tortfeasors may be subject to criminal sanctions, including imprisonment and/or fines.
Unlike other intellectual property rights, in criminal proceedings involving copyright, the copyright owner must resort to alternative dispute resolution mechanisms such as mediation, negotiation and arbitration before litigation, and only after the failure of the alternative dispute resolution mechanism can it enter the prosecution stage.
Intentional infringement of patent rights is punishable by imprisonment of up to 4 years and/or a fine of up to IDR 1 billion, imprisonment of up to 7 years and/or a fine of up to IDR 2 billion if health and/or environmental problems are caused, and up to 10 years in prison and/or a fine of up to IDR 3.5 billion if it causes human death.
The act of use, production, sale, import, export and distribution of a protected design without the permission of the right holder is punishable by imprisonment for up to 4 years and/or a fine of up to IDR 300 million.
Illegal use of a trademark that is identical (and generally similar) to a registered trademark is punishable by imprisonment for up to 5 years and/or a fine of up to IDR 2 billion. Illegal use of a trademark similar to a registered trademark is punishable by imprisonment of up to 4 years and/or a fine of up to IDR 2 billion. Infringing goods that threaten human health, the environment, or cause human death are punishable by up to 10 years in prison and/or a fine of up to IDR 5 billion. Buying and selling goods known or reasonably suspected to be counterfeit is punishable by imprisonment of up to 1 year and/or a fine of up to IDR 200 million.
The Copyright Law stipulates that renting a copyrighted work without permission and using it for commercial purposes is punishable by up to 1 year in prison and/or a fine of up to IDR 100 million, translation, adaptation, performance or dissemination of a copyrighted work without permission and using it for commercial purposes is punishable by up to 3 years in prison and/or a fine of up to IDR 500 million, and publishing, reproducing, distributing or publishing a copyrighted work without permission and using it for commercial purposes is punishable by up to 4 years in prison and/or a fine of up to IDR 1 billion.
3. Arbitration and Alternative Dispute Resolution
Disputes can be resolved through arbitration by the Intellectual Property Arbitration and Mediation Association. Alternative Dispute Resolution (ADR) is primarily regulated by the Arbitration Act. The Arbitration Law defines ADR as the resolution of disputes or differences of opinion through the procedures agreed upon by the parties, i.e., the resolution of disputes or differences of opinion outside the courts through consultation, negotiation, mediation, conciliation and expert evaluation.
The Arbitration Act does not provide detailed rules and procedures for alternative dispute resolution. Parties to a dispute are free to choose alternative dispute resolution rules and procedures. Although Indonesia has ratified the Convention on the Recognition and Enforcement of Foreign Arbitral Awards, international arbitral awards are enforced in accordance with the provisions of the Arbitration Law. Indonesia has been a signatory to the Convention on the Settlement of Investment Disputes between States and Nationals of Other States (ICSID Convention) since 1968. However, Indonesia excludes disputes arising from national administrative decisions issued by the ruling authorities from the types of disputes that may be resolved by ICSID.
In addition, sending a warning letter to the infringer is also a common way to resolve disputes. After discovering the infringement, the right holder may first request the infringing party to stop the infringement by sending a warning letter. Warning letters are a milder means of resolving disputes, which is relatively low-cost and can act as a deterrent. It is important to note that the warning letter should be in Bahasa Indonesia.
PART03
Intellectual property risk response for exhibitions
The fair provides a platform for businesses to showcase their innovations and ideas to potential business partners and customers, as well as an opportunity to learn from others Xi and collaborate. However, disclosing innovations to the public in this way also carries a certain degree of risk of infringement. At present, the patent risks commonly encountered by mainland enterprises at overseas exhibitions include warning letters, temporary injunctions, customs seizures and direct infringement lawsuits. On the basis of the previous understanding of Indonesia's intellectual property laws and regulations and dispute resolution mechanisms, for exhibitors in Indonesia, the following aspects can be considered.
Reserve full-time personnel and overseas service agencies in advance. Arrange special agencies and full-time personnel to be responsible for handling intellectual property matters at the exhibition site before the exhibition, and make overall preparations for various situations that may be encountered in the exhibition. At the same time, enterprises can establish some partnerships, including grasping the information of some local intellectual property agencies and intellectual property law firms, looking for institutions with strong capabilities, high level and friendly to China, and establishing cooperative relations and liaison mechanisms with them. This allows for timely access to professional advice and guidance when risks occur, which is very beneficial and necessary for effective response and treatment.
Do a good job of customs inquiry and filing. Inquire whether the intellectual property rights that are more related to the exhibited products have been filed with the State Economic and Customs for risk control in advance, and the intellectual property rights obtained by themselves in the exhibition place will be recorded with the customs to block competitors. It is important to note that the Indonesian Customs IP recordation is only applicable to trademarks and copyrights. In addition, the customs filing system is not open to natural persons, and only legal entities in Indonesia or foreign companies with subsidiaries in Indonesia are eligible for registration and filing with the customs.
After receiving the warning letter, verify whether the issuer of the warning letter is the right holder or its agent, and determine whether its own product constitutes infringement (such as whether the infringement facts are clear and whether the legal basis is sufficient, etc.). If the content is true and the subject value is reasonable, you can communicate and coordinate with the enterprise and try to settle the settlement to avoid entering into lengthy litigation procedures or being subject to compulsory measures such as temporary injunctions. If it is considered that there is no infringement, it can refuse to sign a warning letter, and at the same time, it can file a counter-warning and apply in writing to a judge or customs for protection. If the other party's unreasonable warning has caused losses to itself, it can also request the court to determine that the other party is liable for damages due to illegal interference with the business activities of others.
When encountering relevant law enforcement officers who come to seize or confiscate exhibits according to the temporary injunction, they should be calm and calm, actively cooperate with the work of law enforcement officers and the coordination of local judicial administrative departments, and actively seek all ways to protect their rights and try their best to reduce the losses of enterprises. With the help of lawyers and other professionals, enterprises can seek solutions, and can file objections, appeals, and appeals with the relevant departments in accordance with local laws, and submit relevant evidence to prove non-infringement. At the same time, unnecessary troubles caused by resisting or obstructing law enforcement should be avoided.
In the event of an infringement lawsuit, the measures that can be taken include raising an objection to the litigation procedure, raising a defense that does not constitute infringement, filing a request for patent invalidation, and filing a countermeasure lawsuit. In the event of infringement by others, exhibitors may take measures to protect their rights through the intellectual property complaint department set up by the exhibition organizer and the intellectual property administrative and judicial departments of the exhibition venue. Combined with the various dispute resolution mechanisms mentioned above, the options include warning letters, communication and negotiation, application for enforcement, application for injunction and filing of lawsuits.
When choosing a risk response plan, possible factors to consider include the market, life cycle, and importance of the relevant technology or product to the enterprise, the cost of coping (e.g., the cost of licensing, circumvention, litigation, etc.) and the ability of the enterprise to respond, and the ability to seek external resources, such as the possibility of cooperating with the rights holder's competitors, the possibility of cooperating with a third party that has obtained a license, etc.
PART04
epilogue
Indonesia is the mainland's second largest investment destination in ASEAN, and in November 2022, the two sides signed the Cooperation Plan under the Framework of the Alignment of the Belt and Road Initiative and the Global Maritime Fulcrum, further deepening economic and trade relations. In the process of expanding the Indonesian market, Chinese enterprises should also strengthen their awareness of intellectual property protection and infringement risk prevention. Understand the local intellectual property environment in advance, strengthen knowledge reserves, use local judicial law enforcement resources as soon as possible in the event of disputes, integrate into legal procedures in a timely and accurate manner, respond to disputes, effectively protect the core competitiveness of enterprises, and safeguard their legitimate rights and interests.
(Original title: Intellectual Property Protection of Indonesian Exhibitions)
来源:IPRdaily中文网(iprdaily.cn)
Author: Du Xian, China Council for the Promotion of International Trade Patent and Trademark Office
编辑:IPRdaily赵甄 校对:IPRdaily纵横君