INDONESIA

ANTI-COUNTERFEITING COMMITTEE REPORT FOR THE 50TH COUNCIL MEETING OF APAA

By Heru Lukito

Legislation

There have been no significant changes to the Indonesian legislation relating to anti-counterfeiting measures. The criminal provisions of the Patent, Copyright, Industrial Designs and Trademark Act continue to be the standard implements of taking action towards the producing and selling of counterfeit goods in Indonesia.

Cases

Besides filing a lawsuit against counterfeiters through court, there is a tendency for trademark owners to push counterfeiters to voluntarily withdraw the counterfeited goods from circulation by publishing a warning letter through major newspapers or sending a cease and desist letter. As criminal-counterfeiting actions is regarded as a complaint delict instead of a common delict, an out of court settlement is found to be an efficient and timesaving alternative in confronting counterfeiters.

Etienne Aigner AG v. Pasti Kaban (Local Merchant)

Etienne Aigner AG (Etienne Aigner) brought action against Pasti Kaban (the respondent), who produced and sold goods such as bags and wallets bearing the mark Etienne Aigner and device as follows:

Etienne Aigner claimed that the respondent has committed a criminal act of intentionally and without right producing and selling bags and wallets bearing a trademark having similarity in its entirety with the registered marks of Etienne Aigner.

Etienne Aigner and the respondent engaged an out-of-court settlement of this case, which consequently puts the respondent in releasing an apology announcement in several major newspapers by admitting the followings:

  1. Admitting for having produced and sold bags and wallets bearing the trademarks, which has similarity in its entirety with the registered trademarks owned by Etienne Aigner;
  1. Realizing that the said act is a violation, which is subject to a civil lawsuit as well as a criminal lawsuit pursuant to Article 76 and Article 90 of Law No. 15 of the year 2001 concerning Trademark;
  1. That the action will not be repeated and willing to bring to a close in producing the goods and withdraw the subject goods bearing the marks of Etienne Aigner from circulation.

Koninklijke Philips Electronics N.V v. Djusanne Suwardi (Local Merchant)

Koninklijke Philips Electronics N.V. (Phillips) brought action against Djusanne Suwardi (the respondent), who sold goods such as light bulbs and ballast, bearing the mark Philips.

Philips claimed that the respondent has committed a criminal act of intentionally and without right in selling light bulbs and ballast bearing a trademark having similarity in its entirety with the registered mark of Philips.

Philips and the respondent engaged an out-of-court settlement of this case, which consequently put the respondent in releasing an apology announcement in several major newspapers by admitting the followings:

  1. Admitting for having sold light bulbs and ballast bearing the trademark, which has similarity in its essential part or in its entirety with the registered trademark owned by Philips;
  1. Realizing that the said act is a violation, which is subject to a civil lawsuit as well as a criminal lawsuit pursuant to Article 76 and Article 90 of Law No. 15 of the year 2001 concerning Trademark;
  1. That the action will not be repeated and willing to withdraw the subject goods bearing the marks of Philips from circulation.

Part 1

Measures for dealing with sales of counterfeit goods via the Internet

The measures for dealing with sales of counterfeit goods via the Internet are the same as in dealing with sales of counterfeit goods via the traditional way. A prosecution civilly or criminally based on the Patent, Copyright, Industrial Designs and Trademark Act can be taken towards infringers selling counterfeit goods via the Internet. However, the main problem in dealing with the sale of counterfeit goods via the Internet is in identifying the infringers and locating the goods being sold. Although it is possible to identify the infringers and the location of the goods, still the identifications of the infringers are always false.

Part 2

Measures that can be taken at the border to stop importation of goods infringing on patent rights

Still, the implementing regulations of Articles 54 – 64 of Customs Law No. 10 of 1985 is still in absence, therefore there are no changes and the position remains as previously reported, namely the possibility to informally request the customs authorities to monitor the importation of the alleged counterfeit goods by way of submitting documents such as pictures, samples of both genuine and counterfeit goods that are requested for monitoring.

------