FOREWORD BY EDITOR, ANDREW CHILVERS
Intellectual property and the challenges of globalisation
When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.
The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.
Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.
Do you see any emerging trends or potential upcoming developments in your country’s trademark law?
Potentially, yes; particularly in relation to the enforcement of trademarks in online commerce platforms. Furthermore, since the new Trademark Law has introduced protections on non-traditional trademarks, we believe there will be increasing numbers of 3D mark registrations, which may potentially overlap with design protection, as trademark owners may opt to register the same as a trademark for an extended protection period.
Under Law No. 30 of 2000 on Industrial Design, to be protected an industrial design must be novel, whereby during the “filing date” of the application no similar or previous disclosures of the relevant design have been made. We believe that this would hamper most registrations since the product has already been launched and sold on the market it would not meet the novelty requirement. Taking this into consideration, the applicant may opt to seek protection as a 3D trademark since there is no novelty requirement applicable for 3D trademark. The protection period for a registered trademark is 10 years and can be extended; where an industrial design is not extendable, the design will become public once the period of 10 years has expired.
In your jurisdiction, what options are available to a trademark holder when applying rights or enforcement rights? What protection is there for unregistered names and/or brands?
The available options for enforcement are by way of the following:
a) Criminal approach: A criminal report may be filed with the police based on Indonesian Trademark Law. Following the police report, they might initiate raid action for confiscating suspected counterfeit products sold/distributed by the alleged infringers. Following the completion of the raid, the police will investigate the alleged infringement. Due to the nature of the crime, a trademark criminal case can be settled based on an agreement between the right holders and the infringers. As such, in practice the police will offer the opportunity, within a certain time period permitted under the penal code, for the infringers to approach the rightful owners for negotiating a possible settlement.
Negotiation If a settlement can be achieved, the trademark owner has the right to withdraw the police report and the policy investigation would be stopped. If, on the other hand, there is no positive result from the negotiation, as a standard procedure the police would complete the case dossier and deliver it to a public prosecutor. Should the dossier and evidence be deemed sufficient by the public prosecutor, then the case would proceed to the relevant criminal court for prosecution.
b) Civil claim: The claim for damages is filed at the Indonesian Commercial Court. A registered trademark owner may file a civil claim against third parties who have illegally used a trademark that is similar or similar in principle to the same type of goods or services without the authorisation of the trademark owner.
c) Alternative dispute resolution: The parties may settle disputes through arbitration or alternative dispute resolution. Since Indonesian Trademark Law adopts the first-to-file trademark registration system, protection upon trademark would arise upon registration and, therefore, unregistered trademarks would not be protected.
How is global innovation and digitalization shaping the advice you give your clients and what should they be aware of?
In this digital era, which increases the speed and breadth of information turnover, it is important for our firm to maintain and remain relevant.
We believe our advice for clients covers current developments and trends to ensure that that it is applicable, particularly in relation to the media being used for the trademark, due to the digital disruption. Digital disruption marks an era of transformation from offline to online services and this impacts the value of existing services offered, including those of the legal industry. For example, (i) how to protect trademarks from potential infringements by a third party in the online / cyber world? (ii) how a digital presence in various online media is important to help convince the status of a trademark? (iii) how does a registered trademark owned by a third party in Indonesia, which is similar to a trademark in another country, potentially mislead the customer since the online presence causing the exposure of the third party’s trademark becomes “without and/or no limits”?