Practice update - trademark certificates

The Trademark Office has implemented a change of practice concerning collection of trademark registration certificates.

Previously, the Trademark Office printed Certificates of Registration before requiring payment of official fees.  The process for a represented applicant was:

1. Trademark Office prints Certificate of Registration (1 - 2 months)
2. Trademark Office issues notification of issuance of Certificate of Registration
3. IP Consultant reports to client and obtains instructions 
4. IP Consultant pays official fees
5. IP Consultant collects Certificate of Registration

Now, the Trademark Office requires payment of official fees before it will print a Certificate of Registration.  The new process for a represented applicant is:

1. Trademark Office issues notification of issuance of Certificate of Registration
2. IP Consultant reports to client and obtains instructions
3. IP Consultant pays official fees
4. Trademark Office prints Certificate of Registration (1 - 2 months)
5. IP Consultant collects Certificate of Registration

The new practice is not expected to cause delays in issuing certificates.  It has been implemented to address the problem of uncollected Certificates of Registration and to reduce printing expenses.

The change was introduced under Trademark Office notice HKI.4.HI.06.07-10 dated 26 January 2015.

PERADI litigation seminar

PERADI (the Indonesian Bar Association) held a two-day litigation seminar last week (15 & 16 April 2015), covering civil procedure and effective dispute strategies.

One topic of discussion was the tendency of the Courts to dismiss cases on technical grounds rather than deal with substantive issues.  Powers of Attorney, jurisdiction of Courts, and parties to proceedings are commonly attacked by defence attorneys, and are sometimes the subject of decisions to dismiss cases on procedural grounds.  Of great concern is that the Courts have not been consistently applying the law on these points, have sometimes applied the law incorrectly, and have not given parties reasonable chances to remedy administrative problems.  

One explanation for why this might be happening is that Judges are said to be dealing with increasingly heavy case loads.  Dealing with cases in this way may help Courts get through their caseload more efficiently in the short term, but does not necessarily produce a just decision and may create more work in the long term as the system ends up dealing with appeals.

Patent Office workshop

The Patent Office hosted a workshop on prosecuting appeals with the Patent Appeals Commission this week.

The sessions were hosted on 15 and 16 April at the Patent Office in Kuningan (Jakarta), and  concentrated on what the new Patent Law (expected to come into force this year) will mean for prosecution of appeals filed with the Patent Appeals Commission.  One interesting change is that the Commission will be able to deal with appeals relating to any part of a patent specification (e.g. description), whereas currently appeals are limited to substantive issues (e.g. claims).  Another is that failure to respond to an Office Action will result in an application being rejected, whereas currently where a response is not filed applications are deemed voluntarily withdrawn - this move to a system of rejecting applications means that decisions can be appealed to the Commission.

The Patent Office doesn’t yet publish examination guidelines, and these sessions are a great way for IP Consultants to keep abreast of current practice.  

Attendees included the Director of Patents, Patent Office examiners, and IP Consultants.  Our Bagus Lestanto (Associate) and Eko Maryanto (Clerk) are pictured in this photograph of attendees:

New trademark and patent appeals panels

The trademark and patent appeals commissions now have officially appointed panels, and will resuming hearing appeals.

A new panel of members of the Patent Appeals Commission was appointed on 25 February 2015 under Ministerial Decision M.HH-01.HI.05.01.  The new panel is made up of:

1. Drs. Azmi Dahlan
2. Dr. Suprapedi
3. Ir. Razilu
4. Parlagutan Lubis
5. Aris Ideanto
6. Ir. Syafrimai
7. Ir. Aslin Sihite
8. Ir. Alex Rahman 
9. Drs. Amir Paulus Tarigan 
10. Drs. Abdi Saputra Sembiring 

A new panel of members of the Trademark Appeals Commission was appointed on 26 March 2015 under Ministerial Decision M.HH-02.HI.05.02.  The new panel is made up of:

1. Dadang Epi Sukarsa
2. Rakhmita Desmayanti
3. Sumardi Partoredjo
4. Drs. Muhammad Adri 
5. Tosin Junansyah
6. Subandini Nurtyas Utami 
7. Sri Mulyono
8. Lusi Dekrisna
9. T. Muammar Kadafi 
10. Widi Nugroho
11. R. Syaifullah Hadiyanto

We noted earlier this year (see here) that the commissions have not been hearing cases since January 2015.  The Trademark Law allows the TMAC panel to serve a term of up to there years before being replaced.

Court administration

A recent article in the Jakarta Post highlights some of the challenges faced by litigators in Indonesia.

The article (see here) describes a day in the life of a Jakarta Legal Aid Institute lawyer, and how he deals with the unpredictable scheduling of Court hearings.  His anecdotes include one story of attending a trial at 4pm, that was originally scheduled at 9am.  This kind of extended delay, unfortunately, is quite common.  Even in the Commercial Court (which hears intellectual property matters) where cases are supposed to be managed to avoid unnecessary delay.

The article also discusses the challenge of access to information, including access to essential case documents like decisions and trial schedules.

The Courts do what they can with limited resources.  More Courtrooms, and more administrative resources would certainly help.  There is also room for improvement - some basic changes could pay big dividends.  Low-hanging fruit that the Jokowi administration could chose to tackle, if it is serious about improving confidence in Indonesia’s judiciary.

Much ado about mattresses

A dispute over distribution of CURESONIC mattresses in Indonesia has spilled into the media, revealing what has become a complex criminal enforcement case.

The Directorate-Genearl of Intellectual Property published a a notice of clarification on its website on 20 March 2015.  The notice refers to a dispute between two mattress retailers, PT. Fortune Star Global (FSG) and PT. Fortune Star Indonesia (FSI), and:

• confirms that FSH has filed a Claim against the DGIP in the Central Jakarta District Court, alleging unlawful conduct;
• notes that the DGIP’s investigation division (the PPNS) received a complaint from FSI on 13 June 2014, about infringement of its registered trademark CURESONIC;
• states that the PPNS is still investigating the case, as it is entitled to do under the Trademark Law; and
• clarifies that FSG has been identified as a witness only (not yet a suspect).

One article covering the story, by Berita Satu news (see here), reveals what FSG is upset about.  It’s Director, Bambang Waluyo, is not happy about being involved in a criminal case that appears to be dragging on (9 months so far).  In Indonesia, directors are personally responsible for the criminal acts of their corporation, so if Waluyo is named a suspect (which has not yet happened) he could potentially be detained.

According to the Berita Satu news article, it is alleged that the DGIP has acted unlawfully in searching for reasons to name Waluyo a suspect, and looking for evidence of infringement based on FSI’s complaint.  In other words, the DGIP is investigating the matter - which it is obliged to do.  It would be very surprising if the Central Jakarta District Court were to find that this constitutes unlawful conduct within the meaning of the Civil Code.  But, surprising Court decisions are (unfortunately) not uncommon in Indonesia.

To complicate matters:

• Whereas the mattresses appear to be manufactured by a Japanese company (Apollo Medical Instrument Co Ltd), FSI is the registered proprietor of the trademark.  The Japanese company has potentially lost control of its trademark in Indonesia.
• Both FSI and FSG appear to be selling CURESONIC mattresses manufactured by Apollo Medical Instrument Co Ltd.  There is no restriction on parallel imports to Indonesia.

It will be very interesting to see how the case develops.

Domains: freebies and censorship

It’s been an interesting few weeks for domains in Indonesia, with the government encouraging use by offering freebies, and flip-flopping on censorship.

This week, it was reported that the Ministry of Communications has allocated IDR50billion (around USD 3.85 million) to support the registration of one million .id domain names free of charge.  The program is aimed at encouraging e-commerce in Indonesia, and reducing international bandwidth usage.  There will be a bit of a wait for anyone seeking to participate - the program is set to commence in 2016.

Separately, the Ministry of Communications first blocked and then reopened access to 22 websites that allegedly promote radicalism.  The Ministry backed down in response to pressure from rights groups, who argued that the move encroached on rights to free speech.  Indonesia’s Electronic Transactions Law allows for censorship of websites that cause offence on religious and/or racial grounds.  The Pornography Law and the Copyright Law also all allow for censorship of websites.

New Director of Patents

A new Director of Patents - Pak Timbul Sinaga - took office on 27 March 2015.

Timbul Sinaga is from North Sumatera.  He was formerly the Director of Copyright, Industrial Designs, Integrated Circuit Designs and Trade Secrets, and the Director of Cooperation and Promotion.

It will be an interesting year ahead for the new Director.  A draft patent law is reportedly in final stages of revision, and is expected to be passed later this year - it has been included in the National Legislation Program (ProLegNas) for 2015 (see our post here).