Wrapping up for 2014

Another year - it’s gone by so fast!  Yesterday was our last working day for 2014, and we’d like to take the opportunity to extend our best wishes to all readers of our blog.  Our readership has significantly increased this year, and we’re humbled by your interest in our stories.  We hope we can continue to maintain your interest in Indonesian intellectual property in the new year.

For now, we’re signing off and taking a break.  Our offices will be closed on 25 December 2014 and until 4 January 2015.  Government offices including The Directorate General of Intellectual Property, Ministry of Agriculture, and BPOM will also be closed for all or part of this time.

Here's wishing everyone happy holidays, and all the best for 2015!

Yours faithfully,

SKC Law

A new geographical indication

Kopi Arabika Java Sindoro Sumbing, a Javanese coffee variety, has been recognised as a geographical indication by the Directorate-General of Intellectual Property.  According to the DGIP’s website, the certificate of registration for Kopi Arabika Java Sindoro Sumbing was presented to the governor of Central Java (Ganjar Pranowo) by the Director-General of Intellectual Property (Ahmad M.Ramli) on 16 December 2014.

Protection for geographical indications (“GI”) is available where a name or sign can be shown to relate to products from a specific geographical location, that have distinctive characteristics.  By restricting use of the GI to a certain category of products, in theory qualifying businesses should be able to extract more value from the product.

So far, most GIs registered in Indonesia relate to coffee and tobacco products.  The Directorate-General of Intellectual Property has so far recognised the following GI’s:

Indonesian coffee GIs:

1. Kopi Arabika Kalosi Enrekang 
2. Kopi Arabika Toraja 
3. Kopi Arabika Kintamani Bali 
4. Kopi Arabika Gayo 
5. Kopi Arabika Flores Bajawa 
6. Kopi Robusta Lampung

Indonesian tobacco GIs:

1. Tembakau Mole Sumedang
2. Tembakau Srinthil Temanggung 
3. Tembakau Hitam Sumedang 

Other Indonesian GIs:

1. Mebel Ukir Jepara
2. Purwoceng Dieng
3. Padi Adan Krayan
4. Madu Hutan Sumbawa
5. Lada Putih Muntok
6. Susu Kuda Sumbawa
7. Kankung Lombok
8. Vanili Kepulauan Alor
9. Ubi Cilembu
10. Carica Dieng

Foreign GIs:

1. Parmigiano Raggiano
2. Pisco
3. Champagne 

SNI - an enforcement tool

Enforcement strategies are often built around criminal and civil infringement proceedings, but regulatory compliance with national standards legislation is also worthy of consideration.

While Indonesia does have a workable intellectual property regime, it has it’s limitations.  One notable weakness is a lack of protection against acts of unfair competition.  Coupled with the fact that trademark rights are administered on a first-to-file basis, the absence of this protection is significant - no registration no trademark right, and also no option to address acts of unfair competition.  Where there is no infringement of registered trademark rights, it is necessary to look for alternative causes of action, and non-compliance with national standards legislation is a good one.

Indonesia’s House of Representatives passed a Standardisation Law (No. 20 of 2014) on 26 August 2014, which codified previously existing regulations.  It is an offence to sell certain products in Indonesian without first obtaining an SNI (Standar Nasional Indonesia - Indonesian National Standard) registration.  A list of products for which it is compulsory to obtain SNI is available on the National Standardization Agency of Indonesia website (see here), and are mostly consumer-facing goods.  Authorities can address non-compliance with confiscation of goods, withdrawal from market, and/or criminal prosecution.  Failures to comply with the Standardisation Law can also breach provisions of the Consumer Protection Law (No. 8 of 1999), which can be further grounds for criminal prosecution.

Securing SNI registrations can be regarded as arduous, especially for smaller businesses, and may be skipped entirely.  Even in larger businesses, proper protections may not have been secured for every required product.  Ministry of Trade figures quoted in a recent Jakarta Post article (see here) reveal that the Directorate-General for Standards and Consumer Protection addressed 601 cases of products that failed to meet national standards in 2013 (the latest figures available).  And those are the cases that the Directorate was able to address with its limited resources.  Many businesses are not full compliant, which makes SNI compliance a useful enforcement tool.

Halal certification law

A new piece of legislation has introduced significant changes to halal certification and compliance procedures in Indonesia.

The Halal Law was passed by the House of Representatives on 29 September 2014.  Products subject to the law are food, beverage, drug, cosmetic, chemical, biological, and genetically engineered products.  Under the law:

• it is mandatory for all such products that are imported, distributed, and sold in Indonesia to be identified as Halal or non-Halal (although there are no sanctions for failing to indicate a products is not halal); and
• a new agency - the Halal Product Guarantee Agency (Badan Penyelenggara Jaminan Produk Halal - “BPJH") is established to issue halal certificates and take action against breaches of the Halal Law.

The BPJH replaces the MUI (Majelis Ulama Indonesia - Indonesian Ulema Council) as certifying body for halal products.  The MUI was previously the only institution that could issue halal certificates in Indonesia.  It still maintains a role supporting the BPJH user the new law.  The BPJH will also take over enforcement responsibilities, previously handled by BPOM (Badan Pengawas Obat dan Makanan - National Agency of Food and Drug Control).

The centralisation of responsibilities with the BPJH will provide more certainty about procedures and costs, and is a positive step.  However, the extensive coverage of the law (all food, beverage, drug, cosmetic, chemical, biological, and genetically engineered products) means that many businesses will need to re-evaluate their certification strategy.  And watch out for amendments to the law introducing sanctions for non-compliance for failing to indicate a product is not halal.

Office Actions & automatic rejections

The Trademark Office has begun rejecting applications automatically where an Office Action has been issued an no response is filed.

The new practice has apparently been introduced in an effort to clear an examination backlog at the Trademark Office.  Efforts are being made to address the backlog before the Madrid Protocol is introduced, after which it is expected that there will be a significant increase in the volume of applications being processed.

It is regrettable that the Trademark Office implemented this new practice without notice.  It would have been relatively easy to arrange an announcement, at least to registered IP Consultants.

In the case of Office Actions issued against multi-class applications, the consequences of being unfamiliar with the new practice can be heavy.  Where an Office Action is issued against one class of goods in a multi-class application, if a response to the Office Action is not filed the entire multi-case application (i.e. all classes) will be automatically rejected (whereas previously, there would have been an examination, and only the problematic class would have been affected).

What we really need is a publicly accessible copy of examination guidelines, and a system for notification of changes - but so far the Trademark Office does not appear to have any plans to provide these facilities.

IDM trademark renewals

IDM trademark registrations have been coming up for renewal, and trademark proprietors may have noticed a change in practice.

When renewing trademarks with registration numbers beginning with ‘IDM’, the Trademark Office is now issuing an official notice of renewal (instead of a certificate of registration of renewed trademark, as was previously the case).  This is a small but positive refinement to trademark prosecution practice in Indonesia.  Under the new system:

• searching will be more efficient, with marks identified by one registration number (instead of a series of numbers - a new one for each renewal); and
• trademark proprietors will not be required to pay an official fee for collecting a certificate of registration for renewed trademarks (which was around USD15).

Official notices are now be accepted by Courts and enforcement authorities as sufficient evidence of renewal of trademarks.