Ethics training for Foreign Advocates

The Indonesian Bar Association (PERADI) hosted ethics training for Foreign Advocates today.

The PERADI training covered the Advocates Law (No. 18 of 2003) and the Advocates Code of Conduct. Dr. Ricardo Simanjuntak explained how these provisions are both the source of protections (e.g. Sans Prejudice privilege, immunity from prosecution), as well as discipline of the profession. Dr. Felix Oentoeng Soebagjo spoke about the role of Advocates and the Indonesian Bar Association.

All individuals practicing law in Indonesia must be registered as Advocates, and all foreigners practicing law in Indonesia must be registered as Foreign Advocates. Foreign Advocates are granted restricted practicing certificates - they cannot appear before the Courts, for example.

DGIP moves to Kuningan - update

More facilities have been moved to the DGIP’s new premises in Kuningan (see our original post about the move here).

The counter that receives applications and issues certificates for registration of trademarks, patents, industrial designs and copyright went live in Kuningan on 18 November 2013.  Here’s what the new counter looks like this:

Now, Kuningan is also host to the:

• Director-General of Intellectual Property;
• Director of Trademarks;
• Director of Copyright;
• PPNS (enforcement);
• Directorate of Cooperation; and
• certificate collection counter.

Yet to make the move over to Kuningan are the:

• examiners and paper files;
• Director of Patents;
• Director of Designs;
• Legal Section (litigation);
• public assistance counter;
• Information Technology department; and
• certificate printing department.

Latest information suggests the move will be completed in around seven month’s time (September 2014).

All correspondence to the DGIP should now be addressed to the Kuningan - Jl. H.R. Rasuna Said, Kav. 6-7, Jakarta Selatan 12190. 

anything.id - new Indonesia domain

Indonesia has opened up a new domain, and business owners should consider whether they need to register.

According to Kompas (see here), the Indonesian domain name administrator (PANDI) has started selling the top-level domain anything.ID:

• first to proprietors of corresponding trademark rights, from 20 January 2014 to 17 April 2014 (the sunrise period);
• second to proprietors of corresponding second level Indonesian domains (e.g. .co.id, .or.id, .go.id, .ac.id, .sch.id, my.id, web.id) (the grandfather period);
• third to Indonesian persons/entities generally (the landrush period); and
• lastly, to the general public.

According to the Kompas article, as at 18 February 2014 PANDI had received 310 anything.id applications and approved 182 new anything.id domain names.

New Copyright Law

A new Copyright Law, which is scheduled to come before the House of Representatives later this year, promises to dramatically change current practice in Indonesia.

A draft we obtained in January 2014, which purports to be the final version ready for submission to the House of Representatives, incorporates some significant changes.  Some of the big ones include:

• A shift to complaint-based crimes.  Authorities will not be able to act without a complaint.  The change will bring the Copyright Law into line with the Trademark Law, Designs Law and Patent Law.
• The introduction of landlord liability.  Criminal provisions in the draft law, albeit with relatively light sentencing (up to 2 years imprisonment and/or IDR100million fine - around USD12,000), mean landlords commit a crime if they allow tenants to carrying on with infringing activity.
• The introduction of criminal penalties for buying certain works.  In the existing law, selling infringing material is a crime but buying is not.  The draft law introduces penalties of up to 30 days imprisonment and/or a fine of up to 10 times the item’s value, for purchasers of  infringing books, musical and cinematographic works.

The draft law includes new and revised provisions and definitions that serve to broaden the scope of copyright protection in Indonesia.

We’ve commented that, unlike other draft laws, the Copyright Law has a real chance of becoming law because it features in the ProLegNas for 2014 (see here).

The new law is likely a product of a domestic push to expand Indonesia’s creative economy, and lobbying from foreign interests seeking higher standards of protection.  It will most definitely be a win for rights holders if the law is passed in its current form.

"Dumb Starbucks"

A cheeky trademark stunt in Los Angeles, poking fun at Starbucks, was a hot topic of discussion on IP blogs and in the media last week.

According to Business Insider Indonesia, a coffee shop looking almost identical to Starbucks stores was set up, and customers were served free coffee (see here).  Operators of the "Dumb Starbucks" store proudly proclaimed that their business was legitimate, referring to the concept of 'fair use' recognised in US Trademark Law (in this case, because use is clearly as a parody and consumers would not be confused as to the original of goods/services, there is no infringement).

They wouldn’t have much luck in Indonesia, where the Trademark Law does not recognise fair use exceptions.

First interim injunction from Commercial Court

An application for an interim injunction was recently heard by the Commercial Court, and is believed to be the first of its kind.

The Court’s decision in HJ. Rachmawti Soekarnoputri v. PT. Tripar Multivision Plus and Ram Jethmal Punjabi and Hanung Bramantyo (93/Pdt.Sus-Hak Cipta/2013/PN.Niaga.Jkt.Pst) is dated 7 January 2014.  The case concerned a popular film, “Soekarno”, which has been screening in cinemas in Indonesia for the past few months - a historical drama about Indonesia’s first president Kusno Sosrodihardjo a.k.a. Sukarno.  The Application for interim injunction was filed by Sukarno’s daughter Rachmawti Soekarnoputri.

The Court’s reasoning in the case is alarming.  Particularly, rights holders will find the Court’s interpretation of the provisions of the Copyright Law governing interim injunctions (article 67 of Law 19 of 2002) overly restrictive.  The Court decided that an interim injunction could only be granted in circumstances where infringing material had not already entered into the course of trade.  Applying this to the facts of the case, the Court found that because the film “Soekarno” was already screening it had no power to grant an interim injunction and have it taken out of cinemas - rather, this would have to be the subject of separate proceedings (full litigation).

The Court partially accepted the application, and the Applicant walked away with a version (not the final) of the script for the film, that could be referred to in subsequent infringement proceedings (if the Applicant elects to file).

The Applicant appeared to be under the misunderstanding that two offensive (to her) scenes were in the movie being screened, whereas it was proven by the Respondent that they were not - they were removed before the final cut.  This reveals a breakdown in communication between the parties that perhaps could have been resolved through mediation or negotiation.

We commented on problems we expect will arise in the prosecution of interim injunctions here.

Congratulations Jennifer Tangka!

It’s a proud moment for SKC Law today, as a member of our team achieves an important milestone.

Our Jennifer Tangka is now a registered IP Consultant.  She graduated with her peers at a ceremony held at the offices of the Ministry of Law & Human Rights this afternoon.  As a registered IP Consultant Jenny is now qualified to represent clients before the Directorate-General of Intellectual Property.

Please join us in congratulating Jenny on her accomplishment!

(Jennifer Tangka & Nidya Kalangie

 at the graduation ceremony)

Reviewing evidence on appeal

A failure to submit evidence to Court in appropriate form at first-instance, cannot be corrected on appeal.

The issue was discussed In the Supreme Court cassation appeal decision Koss Corporation v. Yudi Irawan Anggianto (542 K/Pdt.Sus/2011/31 Mei 2011).  In first-instance proceedings the Plaintiff/Appellant failed to substantiate its claim that it was the proprietor of the subject trademark in Indonesia.  Particularly, the Plaintiff submitted a photocopy of an application form and a printout of a registration record for the trademark, which was not regarded as sufficient evidence.  An original certified copy or original registration certificate should have been presented to the Court.  On Appeal the Supreme Court was asked to review evidence of registration of the subject trademark, but declined to do so.  The Supreme Court noted that examination of cases at cassation level is limited to a review of errors of interpretation of law, breaches of prevailing law, negligence in fulfilling obligations under prevailing laws that could void the lower Court’s decision, or standing of the lower Court.  And the Commercial Court’s decision not to acknowledge the registration (in the absence of evidence in an appropriate form) was sound.

Preparing evidence for Commercial Court proceedings is often a laborious task.  It is necessary to compile original evidence wherever possible, and where it is not to prepare notarisation and legalisation as required (rules vary for different types of evidence).  A failure to comply with the rules of evidence in first-instance proceedings will impact on subsequent appeals, as was the case in Koss Corporation v. Yudi Irawan Anggianto.  For this reason it is important not to cut corners in the early stages of a litigious dispute.

The end of Administrative Rejections

The Trademark Office has recently stopped issuing Administrative Rejections - a huge relief.

In early 2013, the Trademark Office began issuing what we came to refer to as Administrative Rejections.  At the formalities examination stage, notices were being issued by the TMO requiring that applied trademarks be amended by removing elements regarded as incapable of functioning as a trademark.  A (fictitious) example to illustrate the point might be the COCA-COLA Logo here, with which the problem element might have been “5c AT FOUNTAINS IN BOTTLES 5c”.  These types of ‘packaging’ trademarks are often incorporated in trademark prosecution strategies to compensate for the lack of workable unfair competition laws in Indonesia.

The principle issue with Administrative Objections was that there was no legal basis.  According to articles 7 - 12 of the Trademark Law, the Trademark Office must assign an application date where an application is filed with: completed application form (form IV); Power of Attorney; Declaration of Ownership; and correct goods or services classification.  The Trademark Law does not provide for any other basis for refusing to assign an application date, and the Administrative Objections did not refer to any legal authority within the notice..  Notwithstanding, with the Administrative Objections the Trademark Office was effectively refusing to assign a filing date for applied trademarks unless and until the problem was resolved as directed.

The Administrative Objections stated that an element of the applied trademark was not capable of functioning as a trademark.  In the absence of any further explanation from the Trademark Office, presumably this was on the basis of either descriptiveness or a lack of distinctiveness. Any objections on either of these two basis is of course properly dealt with in an Office Action (according to articles 20(2) and 18 of the Trademark Law) to which an applicant has a right to respond (according to article 20 (3) of the Trademark Law).  This right to respond to substantive objections is a fundamental feature of the Trademark Law, affording fairness in examination of applications under a system specifically stated to be in the spirit of ensuring fair competition in business in Indonesia.  Denying applicants the right to respond to substantive objections was not within the spirit of the Trademark Law, and in the circumstances against prevailing laws.

In January 2014, the Director of Trademarks agreed that the practice was without legal basis, and ordered that all such notices be cancelled, and original filing dates assigned to applications.  She also ordered that no such notices be issued in future.  We have confirmed with the Chief of Applications and Publications Sub-Directory at the TMO that these orders are now being put into practice, and the Administrative Objections are no longer being issued.

International IP Index

A review of the performance of international IP offices has Indonesia ranked ahead of Vietnam and Thailand, but behind Malaysia.

The US Chamber of Commerce’s Global Intellectual Property Centre released its is 2nd International IP Index on 28 January 2014 (see here). The report assesses whether the 25 countries examined have IP environments that promote innovation and creativity. 30 criteria were adopted, covering:

• Patents, related rights and limitations 
• Copyrights, related rights and limitations 
• Trademarks, related rights and limitations 
• Trade secrets and market access 
• Enforcement 
• Membership and ratification of international treaties 

This is the first time Indonesia has been included in the report (it was not included in the 1st edition). Indonesia was ranked 22 of the 25 countries surveyed.  Some interesting points about Indonesia to note from the report included:

• having the highest software piracy rate of all countries surveyed, at 86%;
• failure to implement policies for software used by government agencies to be licensed;
• 57th of 134 countries ranked for prevalence of 'physical counterfeiting' on the GTRIC (General Trade-Related Index of Counterfeiting); and
• IP-related barriers to market access for pharmaceuticals, including requirement to establish local manufacturing capabilities or license to a local entity that does.