Trademark enforcement strategies in Indonesia

When conducting trademark enforcement proceedings, there are a variety of strategies to take into account. Sending a cease and desist letter to the infringer to demand that they stop their unlawful behavior is always a smart first step. The trademark owner has the choice of filing a criminal complaint against the infringer with the civil investigator at the Directorate General of Intellectual Property (DGIP) or the Indonesian Police should the infringer fail to comply with the requests made in the stop and desist letter.

The Court of Commerce handles all cases involving intellectual property. Any party with legal rights may also file civil proceedings through the Court of Commerce, including requests for preliminary injunctions and claims for damages or remedies, aside from invalidations and cancellations of registered marks.

The criminal offenses listed in Articles 100 to 102 are considered Complaint Delicts.

“CHAPTER XVIII

CRIMINAL PROVISIONS

Article 100  

(1) Every person who unlawfully uses any Mark which is identical to the registered Mark of other parties for similarly produced, and/or trade goods and/or services, shall be sentenced to imprisonment of up to 5 (five) years and/or fines up to Rp2,000,000,000.00 (two billion rupiahs).

(2) Every person unlawfully uses any Mark which is substantially similar to the registered Mark of another party for similarly produced and/or traded goods and/or services, shall be sentenced to imprisonment for up to 4 (four) years and/or fines up to Rp2,000,000,000.00 (two billion rupiahs).

(3) Every person violating the provisions as referred to in section (1) and section (2), whose goods cause health impairment, environment distortion, and/or human deceases, shall be sentenced to imprisonment up to (10) ten years and/or fines up to Rp5.000.000.000,00 (five billion rupiahs).

Article 10

(1) Every person who unlawfully uses any signs which are identical to Geographical Indications of other parties for similar goods and/or products or identical to registered goods and/or products, shall be sentenced to imprisonment up to 4 (four) years and/or up to Rp2.000.000.000,00 (two billion rupiahs).

(2) Every Person unlawfully uses any sign which is substantially similar to Geographical Indications of another party for similar goods and/or products or identical with registered goods and/or products, shall be sentenced to imprisonment up to 4 (four) years and/or fines up to Rp2.000.000.000,00 (two billion rupiahs).

Article 102

Every Person who trades goods and/or services and/or product which is known or allegedly know that the goods and/or services and/or product constitute criminal acts as referred to in Article 100 and Article 101 shall be sentenced to imprisonment up to 1 (one) year or fines up to Rp200.000.000,00 (two hundred million rupiahs).”

In Indonesia, written documents and oral arguments are used in civil processes. Each party’s court hearings will be considered by the judges one at a time, and they significantly rely on supporting documentation. Verbal evidence from fact witnesses is also allowed in court. A witness statement or affidavit alone won’t be enough, though, as it is only regarded as supplemental documentation. The trial will generally go as follows:

• attendance at the first hearing after the court summons both plaintiff and defendant;
• attendance at the second hearing, when the defendant files its response to the plaintiff’s cancellation suit;
• preparation of the plaintiff’s reply to the defendant’s response to the suit;
• attendance at the third hearing to file the plaintiff’s reply;
• attendance at the fourth hearing when the defendant files its response to the plaintiff’s reply;
• preparation of the plaintiff’s evidence to be submitted to the court;
• attendance at the fifth hearing to submit the plaintiff’s evidence and review the defendant’s evidence;
• preparation and filing of the conclusion of the case based on documents and evidence filed with the court by both plaintiff and defendant;
• attendance at the sixth hearing on the filing of the conclusion of the case;
• attendance at the seventh hearing to hear the judges’ decision; and
• issuance of the court’s decision.

What is the time limit for filing an infringement action?

The right to prosecute will expire with the passage of time, according to article 78 of the Indonesian Penal Code:

• in one year for all misdemeanors and for the crimes committed by means of the press;
• in six years for the crimes upon which fine, custody, or imprisonment of not more than three years is imposed;
• in 12 years for all crimes upon which temporary imprisonment for more than three years is imposed; and
• in 18 years for all crimes upon which capital punishment or life imprisonment is imposed.

What are the possible defenses against an accusation of infringement, dilution, or any other similar action?

When facing an infringement or dilution lawsuit, there are a number of things to take into account. The most crucial thing to consider is whether the plaintiff has consistently used the trademark for three years from the date of final use or from the date of registration. If that isn’t the case, we can take counterattack action by filing a non-use cancellation action.

To avoid the worst fines from the Court of Commerce, it is advisable to seek a settlement outside of court if we are facing an obvious case for an infringement that is almost comparable in nature.

Who may claim compensation for an alleged trademark infringement, and under what circumstances? Who has the right to file a criminal charge?

According to Article 83 of the Trademark Law, the owner of a registered mark and/or its licensee may sue third parties who erroneously use a mark that is identical to or confusingly similar to theirs for similar products or services in the following manner:

• claim for damages; and/or
• ceasing all acts related to the use of marks.

Based on a court ruling, the owner of a well-known mark may also initiate the lawsuit.

The trademark owner should, ideally, register the complaint in cases of criminal activity. On the advice and approval of the trademark owner, the authorized licensee may, in some instances, also bring a criminal complaint.

What options are available to a party who wins a lawsuit for infringement or dilution?

All laws governing intellectual property assets let those who have been violated file a lawsuit in a court of commerce for compensation. However, there is no standardized approach to determining the proper damages. The compensation shall be made in accordance with a final, binding judgment rendered by a civil or criminal court. Keep in mind that the party receiving legal services from the entrusted attorney is responsible for paying the attorney’s fees. As a result, the claimant or plaintiff will be unable to ask the other party to pay the legal expenses that they have already expended.

The Trademark Law allows a right holder to obtain a provisional injunction to prevent the distribution of infringing materials, as well as to secure or recover them and prevent further damages. As far as they can restrict the capacity to register a patent registration with Indonesian Customs, provisional injunctions may be helpful to carry out their intended purpose. To do this, Indonesian Customs must be filed a provisional injunction to prevent the entry of allegedly infringing goods into the distribution system.

*** Other Articles***

– You could visit here to see 05 Legal Notes About Trademark In Indonesia – Indonesia Trademark Law

– You could visit here to check the Trademark Registration in Indonesia.

– You could check the Procedure of Trademark in Indonesia here.

– You can also check the Required documents of filing trademark in Indonesia

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