ASIAN PATENT ATTORNEY ASSOCIATION

Transcription

1 ASIAN PATENT ATTORNEY ASSOCIATION Group Report to DESIGN COMMITTEE MEETING at the 55 th Council Meeting in Singapore by Migni Myriasandra & Rahajeng Handayani I. LEGISLATIVE DEVELOPMENT Further to our previous report in regard to the draft of revised design law No. 31 of 2000, up to the meantime Directorate of Industrial Design keeps working on this project for the accomplishment of this respective draft, which among other efforts taken was holding a discussion with any potential parties to gain input, review and comment on the respective draft for further its completion. One of the related efforts takes was in cooperation with IIPS (Indonesian Intellectual Property Society) by holding a discussion with Professor Keita SATO from Chuo Law School on last September 4, One of the main topics of the discussion is related to the examination procedures which will be introduced to be implemented under this revised draft, to avoid an excessive registration which granted to the products that already being a public domain and being sold in the market, also difference infringement standard applied for design and trademark, when a legal conflict involving a 3 three-dimensional object arises. The above effort is taken by the Directorate of Design solely to obtain a resourceful point of view from potential qualifies parties for the completion of the revised national design law, so expectantly the revised law will be able to anticipate any legal conflict arise in the design case occurred in the future. II. REPORTED CASES ON INDUSTRIAL DESIGNS There are 2 (two) cases occurred during this year that are interested to be reported. PT. Hitachi Constructions Machinery Indonesia v. PT. Basuki Pratama Engineering The first case is a cancellation action filed by PT. Hitachi Construction Machinery Indonesia as a plaintiff against PT. Basuki Pratama Engineering, the owner of Design Registration ID D dated 7 June 2005 for Boiler Machine. On 17 January 2006, the Defendant made a public announcement on local newspaper concerning his exclusive right and reserved his right for design product of Boiler Machine. 1

2 The Plaintiff filed his cancellation action based on the fact that the Defendant s product has already become a public domain and familiar known among the boiler machine producers and customers long before the Defendant filed his respective design product. Therefore, due to the existence of Article 2 and Article 4 of Law No 31 of 2000 concerning Industrial Design, in regards to the requirement for Novelty aspect and previous disclosure for registering a design object, the Defendant shall not be entitled to have his product to be registered. Furtherance, since the respective product is obviously has no novelty aspect as required by the Design Law, it can be assumed that the intention to register the respective product was made in a bad faith or dishonesty purpose. Hence, it might be filed for cancellation based on Article 12, Article 2 and Article 4 of the Industrial Design Law. Our Industrial Design Law adopts First File, First Serve principle, as refer to Article 12 of the Industrial Design Law which stated that The party who first files an application shall be deemed as the right holder to Industrial Design unless proven otherwise qq. Article 4 of the Industrial Design Law: The Right to Industrial Design shall not be granted if an Industrial Design is contrary to the prevailing laws and regulation, public order, religion or morality. During the trial, the Defendant filed reconvention suit and sued the Plaintiff based on his exclusive right as the design right holder who may bring a lawsuit against any person who deliberately and without rights commits acts of making, selling, using, selling, importing, exporting and/or distributing the products without his consent and may ask this party to claim for damages and/or ceasing of all his acts of making, selling, using, selling, importing, exporting and/or distributing the products without his consent (Article 46 qq. Article 9). On this reconvention suit, the Defendant request claim for material damages in the amount of USD $ and seized as a warrant to Plaintiff s asset of building and land. At the first instance court, the Panel of Judges refused to release the Plaintiff request as well as refused the Defendant s response. The Panel of Judges only confirmed that the Plaintiff s lawsuit is unacceptable (Niet ontvankelijk verklaard) because the Plaintiff has never filed any of his design application, and furtherance the Plaintiff was only being penalized to pay the trial fee. When the Plaintiff went to cassation level, the Supreme Court refused his cassation request and affirmed the decision of the first instance court. To this second failure, Plaintiff filed a judicial review to the Supreme Court based on the occurrence of judge s negligence in reviewing the case base on novelty aspect (Article 2) and previous disclosure (Article 4), as this issues can be obviously noted and recognized because the respective product has become a public domain and commonly used and sold in the market, and also already advertised in the promoting brochures and yellow pages since year of

3 Further negligence recognized in regard to the insufficient legal consideration (Onvoldoende Gemotiveerd) taken by the Panel of Judge in reviewing the case, because the judges, based on their authority, did not initiate to examine further the case concerning similarity on the conflicting designs, eventhough this issue is not sufficiently covered in detail under the Industrial Design Law. Due to incomplete provision in determining degree of similarity on the conflicting products, the Judge shall render their decision based on the existence of Law No. 4 of 2004 regarding Judicial Power, under Article 16, which stated that the court must not decline to examine, hear and decide upon any filed case on the grounds of nonexistent or unclear law; rather, it shall be obligated to examine and hear the case and Article 28 which stated The Judge obligates to examine, follow and understand the justice that existing in the society, including referring to the unwritten law, which can be used as a legal reference in rendering the issuing decision (Article 25). Based on the above legal source, the Judge would be able to prove someone s bad faith in filing a design registration, as stated under Article 12 of Industrial Design Law, The party who first files an application shall be deemed as the Right Holder to Industrial Design, unless proven otherwise. To this Judicial Review request, the Supreme Court is of the opinion that the filing of Judicial Review was not in accordance to Article 67 letter a to f of Law No. 5 of 2004 on Judicial Power, regarding the conditions shall be accomplished for filing a judicial review, respectively, the Judicial Review was refused and PT. Hitachi Construction Machinery Indonesia was penalized to pay trial fee for Rp ,- PT. Karya Tangan Indah (KTI) v. Denny Aryasa * Sample of the Bali Silver works Actually this case is a copyright case. However since the subject matter for this case is a handy craft, we consider this case is an interested case to be discussed further. The case is involving a local silver craftsmen, Ketut Deni Aryasa, who is being accused criminal action for imitating copyright of silver works of crocodile and 3

4 fleur motif owned by PT. Karya Tangan Indah (KTI) a local company owned by US Nationality. Deny Aryasa is sentenced to 2 years imprisonment and fine for Rp ,- This criminal charge has made thousands of silver craftsmen in Bali feel nervous and traumatic in producing their works, because it is predicted about 800 silver works motif have been claimed by foreigners domestically or internationally. And for its further consequence, number of export on January July 2008 significantly decreased from 1,4 trillion to 60 billion for the same period in the last year, because the respective works are refused by reason of copyright infringement. In fact, the respective design has already been produced and used in society far before the registration was filed. This case is interested to be reviewed and analyzed because of the following points: 1. Overlapping interpretation between Copyright Protection and Design Protection for the subject matter of handicraft. a. The pattern/design or motif of the respective handy craft is proper to be protected under Copyright Law and also when the respective motif or design is made into other form of various work modes of handicraft, i.e. brooch or hair pin, which made for limited edition, then it shall be protected under Copyright Law. b. However when the respective subject matter is made and produced into other form of works modes of handy craft, i.e. brooch or hair pin, but to be exported to others country as an industrial commodity good, the proper legal protection for this subject matter is under the Design Law. It is in accordance to Article 1 of Industrial Design Law, which stated that: Industrial Design shall mean a creation on the shape, configuration, or the composition of lines or colors, or lines and colors, or the combination thereof in a three or two dimensional form which gives aesthetic impression and can be realized in a three or two dimensional pattern and used to produce a product, goods or an industrial commodity and a handy craft. 2. To this legal problem, the draft on revised Industrial Design Law proposes a short time protection for 2 year periods to protect designers and/or craftsmen with a very short life time creativity in design with an advantageous filing fee to support SME Entrepreneur, because the respective design mostly will be changed after 2 (two) years. 3. The notification of US pending patent and year of production which appeared on the design product of handicraft has made local craftsmen feel traumatic for any possible criminal charges and/or material damages claimed by foreigner as the right owner of the respective products. 4

5 YEAR OF 4. Ironically, the ancient motifs or designs which originally come from Indonesian culture and heritage are approved by the Copyright Office to be registered in the name of foreigner. To this situation, expectantly the Directorate of Design and Copyright becomes more aware of any possible claim from foreigner to the original Indonesian s work and develop their integrated filing system among the Directorate to anticipate further legal cases. III. STATISTIC REPORT OF DESIGN FILING IN INDONESIA (2008) ** YEAR YEAR OF PROCESS Up to July 2008 TOTAL REGISTERED REJECTED Has been processed PROCESSED REGISTERED REJECTED Has been processed PROCESSED REGISTERED REJECTED Has been processed PROCESSED REGISTERED REJECTED Has been processed PROCESSED REGISTERED 0 0 REJECTED 3 3 Has been processed 3 3 PROCESSED Source:*) Various on-line opened sources ; **) Directorate General of Intellectual Property Rights database 5