Indonesia – Industrial Designs

10 February, 2016

 

What are industrial designs?

 

A registered design is a right granted to the owner of a design to stop others from making, importing or selling, without their permission, an article to which that design or a design not substantially different from it has been applied.

 

Pursuant to Article 1(1) of the Indonesian Design Act, industrial design is meant as: “a creation on the shape, configuration, or the composition of lines or colour, or lines and colours, or the combination thereof in a three or two dimensional forms which gives aesthetic impression and can be realised in a three or two dimensional pattern and used to produce a product, goods or an industrial commodity and a handy craft.”

 

In short, the industrial design will protect the appearance of an article, so long as it is new, i.e. not previously published, and that the appearance does not amount to a practical or technical benefit to its intended purpose.

 

Industrial designs in Indonesia

 

As with patent law in China Indonesia operates a ‘first-to-file’ system for industrial designs, meaning that the first person to file for design registration in the Republic will own that right once the application is complete and a grant has been made.

 

Registrations are filed with the Directorate General of Intellectual Property rights and must be made in Bahasa Indonesian.

 

Applications can take between 2-3 years to be granted and cost EUR 55 plus any agency fees, multiple design filings are not accepted.

 

Documents required for filing are as follows:

 

• Drawings or photos of the design;
• A written description of the design for which protection is sought;
• The completed application form

 

Where the ownership of the design has been assigned to a third party, the application must also include a statement with adequate supporting evidence to this effect.

 

Previous registration of copyright can strengthen the legitimacy of the IP owner’s claim to the rights in the design and can be considered by SMEs as a possible strategy for improving the chances of a successful registration.

 

These documents must be submitted to the following address:

 

The Directorate General of Intellectual Property Rights
Ministry of Law and Human Rights
Administrative of the Directorate of Industrial Design
Jalan H.R. Rasuna Said, Kav 8-9
Jakarta Selatan 12190, Indonesia
Tel: +62 21 579 05606

 

The examiner may raise objections if they believe that the design is a ‘common-place’ design with no distinctive features, counter arguments may be filed to overcome such objections however. Once the application has passed the examination phase is will be published for opposition. Where no opposition is filed during the three month period, the certificate of registration will be granted.

 

Enforcement

 

Whilst the IP laws in Indonesia are largely seen to be compliant with the Republic’s obligations under the Agreement on Trade-related Aspects of Intellectual Property (TRIPs), the enforcement and border protection systems have yet to develop sufficiently to present an effective control on IP infringement and infringement rates remain high.

 

SMEs working on a budget should first consider private mediation via legal professionals as a first stop solution for approaching infringers. This is especially attractive for SMEs s it is far less costly and time consuming than alternative actions.

 

In theory there is also a usable criminal enforcement system, however in practice such actions have been difficult for foreign companies due to lack of transparency in police procedures, among other factors. A new enforcement agency, the Directorate of Investigation, has recently been set up, however it still lacks the resources required to be effective in combatting piracy issues and generally only handles around 30 cases a year usually restricted to Jakarta.

 

Design infringements are ‘complaint-based’ crimes, requiring IP owners to file a formal complaint with the police before any action is taken.

Initiating criminal proceedings with the police can also be very costly, with raids costing between EUR 8,000-19,000. As such, these actions should be reserved for targets which would generate maximum publicity, and therefore act as deterrent for other existing and potential infringers. Most raid simply result in the confiscation of the infringing goods with no further action. IP laws provide for substantial fines and prison sentences for infringers, up to EUR 350,000 and seven years imprisonment. However, only minor fines are usually given and there are large inconsistencies in the sentencing practices of criminal courts.

 

Civil litigation, is even more expensive than criminal raid actions, and is only generally preferred for patent cases as the issues involved can be more complex. However, in the event that civil procedure is used for a design case, good evidence preparation is essential. This can involve evidence from prior raid actions and interviews, surveys, investigator reports, testimonies, video or tape recordings. Overseas evidence will need to be legalised. As discussed in the previous section, the Indonesian judiciary is still fairly inexperienced in handling patent cases and any official case reporting of similar actions in other jurisdictions can also help strengthen a case.

 

Even if an action is successful however, the legal costs are not recoverable and any awards may not cover the whole cost of the action as principles for calculating damages are not yet established and vary wildly from court to court.