Provisional decision on IP case

As a member of World Trade Organization, Indonesia has adopted the TRIPs Agreement in its IP laws, including regarding injunctions. Nonetheless, due to the lack further explanation especially on how to proceed with the injunction, these provisions could not be applied in practice.

In order to provide guidance for law enforcers to proceed with provisional decisions/injunction proceedings, the Indonesian Supreme Court issued Regulation No 5 of 2012 regarding provisional decision.

The decision itself will be issued by the Commercial Court upon a request from the claimant against the violation in the field of patent, trade mark, copyright or industrial designs.

The purposes of the provisional decision are: (1) to prevent the importation of infringing goods; (2) to prevent the destruction of evidence by the suspected party; and (3) to stop the infringement and to prevent further losses being incurred.

The requirements needed to request the provisional decision are: proof of IP ownership; sufficient evidence to prove the existence of IP infringement; description of the goods or documents which will be requested or sought or seized; payment of warranty (either in cash or bank guarantee) equivalent to the amount of the suspected goods.

It has been two years since the issuance of the Regulation. However, it seems that it will need more time before it can be successfully implemented.

Some consider that the Regulation is obscure and ambiguous. An injunction is new compared to the existing proceedings under the criminal and civil law. Besides that, the huge amount of money the claimant must pay as the warranty is also a reason for not using this kind of remedy. If the accused can prove otherwise and the claimant loses, the warranty will be given to the accused.

Based on our records, the one (and maybe the only) case ever published in connection with this matter was the injunction of the movie “Soekarno: Indonesia Merdeka” in late 2013.

The claimant was Rachmawati Soekarnoputri, the daughter of Indonesia’s first President Soekarno against director Hanung Bramantyo, and the film company namely PT Tripar Multivision Plus. Soekarnoputri claimed that the movie produced by the accused parties was different from the script she originally made so that it amounted to infringement.

The request of the injunction was submitted on December 10 2013, but the movie was released on December 9 2013. Originally, the request should be filed before the counterfeited products enter the actual market. Therefore, the issuance of the injunction was useless since the movie continued to play.

The case was decided in March 2014 under an Indonesian civil lawsuit. Soekarnoputri won the case. Nevertheless, this has shown that it will take some more time for IP owners as well as law enforcers to apply injunction proceedings effectively in Indonesia.

 

Source : http://www.managingip.com/IssueArticle/3362398/Archive/Indonesia-Provisional-decision-on-IP-case.html

 

Written by :

               

Nadia Am Badar

Nadia Am Badar, SH


 

mali

Rochmali Zultan, SH


Am Badar & Partners

Jl. Wahid Hasyim No. 14

Jakarta 10340

Indonesia

Phones:   62 21 3983 7314 and 7315

Faxes:     62 21 3983 7319 and 7300

E-Mail:    info@ambadar.co.id

Website:  www.ambadar.co.id

 

 

 

 

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