Our new IP Consultants

SKC Law is celebrating today, as our Associates Dian Kirana and Bagus Lestanto are officially recognised as newly registered IP Consultants.  A graduation ceremony was held at the new offices of the Directorate-General of Intellectual Property in Jakarta today.

As registered IP Consultants, Dian and Bagus are now qualified to represent clients before the Directorate-General of Intellectual Property.  This includes the prosecution of patent, trademark, industrial design and copyright matters.  They have joined a group of over 700 peers and an expanding profession.

Please join us in congratulating Dian and Bagus on their accomplishment!

WIPO File Tool

Indonesia’s Directorate-Genearl of Intellectual Property plans to introduce the WIPO File Tool to improve efficiency in trademark prosecution.

In essence, the WIPO File Tool is everything we might expect from an e-filing system, minus online payments.  The platform can be developed into an e-filing system when an online payment facility becomes available - and we understand this is not far away.  

The way the WIPO File Tool will work for trademark applications is:

• IP Consultants will be granted secure online access;
• application details can be submitted online by IP Consultants; and
• payment can be attended to at the Trademark Office as per current practice.

The system will also accommodate online editing (saving and amending drafts, up until the application is submitted), and online post-filing requests (changes of name, address, etc.).  WIPO is customising the system to accommodate local practice requirements, and expects to complete this work within 6 months.

The Trademark Office hosted a seminar to socialise the new system on 6 November 2014 (see photo, from DGIP blog).  According to the DGIP blog, around 40 IP Consultants attended the session.  As did representatives of our Trademarks Team.  At this session, it was confirmed that online payment will eventually be accommodated.

The DGIP plans to introduce the WIPO File Tool after implementing regulations are passed by the Ministry of Law.  Although historically intellectual property laws and regulations have not been prioritised, the new administration under president Joko Widodo is making all the right noises about developing Indonesia’s creative economy and we hope to see better performance from legislators.  Further, it’s an obvious way to reduce administrative burdens on the Trademark Office and clear backlog before an expected increase in numbers of applications after the Madrid Protocol is introduced.  Potentially, we could see online trademark prosecution before the end of 2015.

New Trademark Law coming soon

Progress is being made towards implementation of Indonesia’s new Trademark Law.

The Directorate-Genearl of Intellectual Property has been working on a draft law since 2012.  According to the DGIP blog (see here), only a few further amendments are required to an advanced-stage draft before it is ready for submission to the House of Representatives.  The Director of Trademarks (Bambang Djajaatmadja) has said he hopes that the new Trademark Law will be intensively debated in the House of Representatives early in 2015.  The Director General (Ahmad Ramli) has noted that the new law is line with recently inaugurated President Joko Widodo’s plans to develop a creative economy and national innovation, indicating that it is a priority.

Aspects of the new law that are still subject to debate include:

• authority of the Trademark Appeals Commission;
• procedures for renewing trademarks online; and
• registration of collective trademarks by government authorities.

The new law will introduce significant changes, including;

• new examination procedures - no substantive examination before publication for opposition purposes;
• recognition of some non-traditional marks - 3D marks, sounds, scent, and holograms;
• accommodation for electronic filing of applications for registration;
• renewal period shifted to 6 months before and after expiry (currently 12 months before);
• accommodation for Madrid Protocol applications (will need supporting regulations); and
• increased criminal penalties (up to IDR2.5billion).

It is widely expected that the new law will be issued by the end of 2015, so the Madrid Protocol is introduced before the ASEAN Economic Community is formed.

Creative industries in Indonesia

Recent news items reveal genuine efforts are being made to develop creative industries and generate revenue from copyrighted works in Indonesia.

The Directorate-Genearl of Intellectual Property has announced plans to set up a Collective Management Body, which would facilitate the collection and distribution of royalties to copyright owners.  This is according to the Director-General of Intellectual Property, Ahmad M. Ramli, who is quoted in a Jakarta Post article (see here).  He notes that realising economic gains from domestically owned intellectual property will contribute to Indonesia’s ambitious GDP growth targets.

Then there is the news that PT Tokopedia, an Indonesian e-commerce business backed by Japan’s Softbank and America’s Sequoia Capital, intends to invest heavily in establishing Indonesia’s version of Silicon Valley (see here).  PT Tokopedia intends to establish the facility, which it intends to call ’Tokopedia Campus' over then next five years.

And of course our new Copyright Law, about which we have commented in a number of posts.  It introduced significant changes that broadened the scope of protection of copyright in Indonesia, put in place new enforcement tools, and modernised the law with fair use exceptions.

This is all good news for both foreign and domestic businesses, which stand to benefit from more comprehensive protection and investment in IP infrastructure.

APAA Penang

Nidya Kalangie and Andrew Conduit will be attending the Asian Patent Attorney's Association council meeting in Penang from 8 to 11 November 2014.

We'd love to meet with any readers of our blog that might also be attending the conference.  If you'd like to see us, please send an email to APAA@skc.co.id.

ASEAN TMview

IP offices of ASEAN member states and the EU-ASEAN Project on the Protection of Intellectual Property Rights (ECAP III Phase II) have developed a regional trademark search tool that can be accessed online (see here).

As the ASEAN Economic Community ("AEC") approaches, business is considering how to protect and commercialise intellectual property on a regional level.  Access to information is a significant hurdle in prosecuting intellectual property rights, and ASEAN TMview aims to ease the pain by making trademark data freely available on one convenient platform.  The database claims to include 2,269,674 records, for all ASEAN member countries save for Vietnam and Myanmar.

Although ASEAN TMview claims to facilitate access to information about trademark applications and registrations in participating ASEAN Countries - including Indonesia - it appears that it may not be a comprehensive resource.  The Indonesian data, at least, is subject to significant limitations that are not immediately apparent when browsing the ASEAN TMview website.  Following a review of a selection of trademark records, it would appear that that ASEAN TMview's Indonesia database draws from the Indonesian Trademark Office's online database - which includes only registered trademarks (no applications) and is not kept updated (there are a significant number of missing records).  For this reason, neither ASEAN TMview nor the Indonesian Trademark Office's online database should be used for clearance searching.

ASEAN TMview and the Indonesian Trademark Office's online database are useful for preliminary searching, and it is great to see progress in facilitating access to registers.  As the databases are developed, we may eventually see full online access to a database that accurately reflects the General Register of Trademarks.  And that will make everyone in the IP community very happy.