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03 Aug 2021

icon-write Tim Slingschröder

Registering a Trademark, Patent or Copyright will virtually always make illegitimate copiers offenders punishable by law. The road from spotting possible infringement to obtaining justice often is a complicated one, which is as good as impossible to navigate without the help of a professional.

Step one: Determining likely infringement

Trademarks or Designs similar to someone’s registered one could show up anywhere. A Mark could appear in the periodical publications from the Directorate General of Intellectual Property but can also appear in markets being notorious spots for the sale of counterfeited goods. Either way, when a Mark or Design is seemingly comparable to a priorly registered one this does not necessarily have to be the case. Before taking any legal action it is therefore recommended to check whether a third party is indeed infringing Intellectual Property rights according to the relevant laws and regulations.

Step two: Sending a warning letter

In most cases, the threat to bring an illegitimate copy-cat to court is sufficient to quit his infringement. An official letter from an established law firm listing down possible consequences such as fines and imprisonment scares the majority of violators into admitting their wrongdoing. This typically results in a conversation in which the immediate stop of the infringement, the destruction of counterfeited goods and the payment of damages are being agreed upon.

In some cases, settlement is not that easy though. Parties which continue to use a Trademark or Industrial Design similar to the registrant’s one after receiving such a warning letter can be subdivided into two groups. The first group does not intend to copy someone else’s registered Intellectual Property, but may simply disagree and argue that their Mark or Design is substantially different from the one they allegedly copied. Another group of parties does intentionally copy other people’s registered Intellectual Property.

Step three: Mediation

Depending on the likely intentions of the counterparty, the next step in the process will be either mediation or filing a lawsuit. Since the prior option is often faster and less costly, mediation is preferable in most cases – though the alleged infringer needs to agree upon the use of mediation to settle the conflict. Article 4 of Law 1/2016 about Mediation states that civil disputes are eligible for settlement through mediation, with some exceptions (e.g. the dispute is already brought to court). Once parties indeed wish to continue through mediation, they will have to draft a mediation agreement, in which they jointly define the applicable terms and conditions and choose a certified mediator.  If the agreement has been made both parties and their attorneys schedule a date and location when and where the actual mediation meetings will take place. During such a meeting both parties clarify their points of view. After each party explained his side of the story discussion takes place through the mediator, which ends with the latter party drafting a final agreement. This final agreement contains the decisions both parties will obey in the future. This could indeed include the infringing party having to pay damages, but could also conclude that no illegitimate copying took place to begin with. By signing the final agreement both parties involved declare to live by it, making the agreement legally binding.

Step four: Court procedures

Contradictory as it might sound, a good lawyer always tries to avoid having to file a lawsuit. Solutions through a good discussion or mediation are practically always in the best interest of a client. However, when counterparties refuse to enter into discussions or violate closed agreements, the way to court is the only one left. Civil court procedures regarding Intellectual Property disputes are to be filed with the Commercial Court (Law 20/2016 about Trademarks, Art. 83; Law 28/2014 about Copyrights, Art. 95; Law 13/2016 about Patents, Art. 144; and Law 31/2000 about Industrial Designs, art. 46).

Apart from a civil procedure, victims of Intellectual Property infringement can also start a criminal procedure against the violating party. Criminal procedures are not aimed at compensating such victims though but have the punishment of the wrongdoer as their main purpose. Also note that under Indonesian law, Intellectual Property infringement is a so-called complaint delict, meaning authorities will only start investigating and prosecuting upon reporting by the disadvantaged party. The authorities with which one can report suspected violation of Intellectual Property rights is the Directorate General of Intellectual Property (DGIP).

Intellectual Property