Regulations on Industrial Design
Several International Agreements regulate the protection of Industrial Design, among others: The Paris Convention (ratified by the Indonesian Government through Presidential Decree No. 15 Year 1997), The TRIPs Agreement (ratified by the Indonesian Government through Law No. 7 Year 1994), The Hague Agreement (Indonesia became a member of this Agreement in 1950), Locarno Agreement and Berne Convention (ratified by the Indonesian Government through Presidential Decree No. 18 Year 1997).
Unlike other countries, such as Thailand, the protection of Industrial Design in Indonesia is provided under its own specific regulation and not as a part of Patent regulations. The protection of Industrial Design in Indonesia is basically covered in the following 3 main regulations, namely: Law No. 31 Year 2000 concerning Industrial Design dated 20 December 2000 (Law No. 31 Year 2000), Government Regulation No. 1 Year 2005 on the Implementation of Law No. 31 Year 2000 concerning Industrial Design dated 4 January 2005 and Law No. 7 Year 1994 concerning the Ratification of The World Trade Organization Agreement (TRIPs).
According to Article 1 of Law No. 31 Year 2000 an Industrial Design is the creation of a shape, configuration, or the composition of lines or colours, 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.
Based on Article 12 Law No. 31 Year 2000 Indonesia adopts the first to file principle in relation to Industrial Design protection. Therefore, the party who first files an application shall be deemed as the Right Holder unless proven otherwise.
Industrial Design applications in Indonesia can be requested for:
1. One product
According to Article 13(a) Law No. 31 Year 2000, this kind of application is filed for the whole creation applied in a product as one Industrial Design or a unity of product and components of a product that create an Industrial Design. For example, an application that is filed for a cup seeks for Industrial Design protection for every component and creation of the said cup, e.g. the ornaments, the handle, shape of the cup, etc.
2. Partial Design
Based on Article 13(a) Law No. 13 Year 2000 in conjunction with Article 6(1)(g) Government Regulation on the Implementation of Law No. 31 Year 2000, this kind of application is filed to seek protection only for some parts of the creation applied in a product as one Industrial Design. For example, an application that is filed to seek protection only for certain parts of a cup, namely: design of the ornaments or the handle, etc.
3. Set of products
Based on Article 13(b) Law No. 13 Year 2000, an Industrial Design application can also be filed for several products/Industrial Designs that constitute a unity of an Industrial Design or that have the same class. For example, an Industrial Design application can be filed for a set of cup, saucer, and pitcher; or for pen and its cap, etc.
The right to Industrial Design is granted on the basis of application and shall be given for 10 years commencing from the Filing Date of Application, without any renewal.
Procedure of Registration
Applications should be filed in writing to the Directorate General of Intellectual Property Rights in the Republic of Indonesia. Applications filed by foreign applicants should be filed through an appointed Consultant of Intellectual Property Rights as their proxy (Article 14 paragraph (1) in conjunction with Article 1 paragraph (8) and (10) Law No. 31 Year 2000).
After submission of the application, it is subject to an administrative examination. Upon completion of such examination, the Directorate General shall subsequently publish the application for the period of 3 months. At the time of the filing, the applicant can simultaneously submit their request in writing to defer the publication. Such deference shall not exceed 12 months commencing from the filing date or the Priority Date (Article 25 paragraph (4) in conjunction with paragraph (5) Law No. 31 Year 2000).
Previously, upon expiry of the publication period and in the absence of opposition/objection by a third party, the application was automatically registered and the Directorate General subsequently issued a Certificate of Industrial Design for the relevant application (Article 29 Law No. 31 Year 2000). Only in the event that there was an objection filed against the published application within the publication period, would the Directorate General conduct a substantive examination upon the relevant application. The Directorate General would notify the applicant on the said objection and the application had the right to submit their counter against the objection. Both objection and counter objection were used by the Industrial Design Examiner as material for consideration in examining the application. The decision of such examination was issued within 6 months commencing from the expiry of the publication period (Article 26 Law No. 31 Year 2000 concerning Industrial Design).
However, considering the significant increase in the number of Industrial Design Applications filed with the Directorate of Industrial Design, Copyrights and Trade Secrets, after the promulgation of the Government Regulation No. 1 Year 2005 concerning the Implementation of Law No.31 year 2000, every Industrial Design application that has passed its publication period shall subsequently be processed in the substantive examination. The Examination is conducted thoroughly based on the following criteria:
a) whether the industrial design is novel having no prior disclosures worldwide, and
b) not contrary to prevailing regulations, public order, religion or morality.
Withdrawal or Cancellation
Withdrawal of an Industrial Design Application can be requested in writing by the applicant to the Directorate General of Intellectual Property Rights. The said request must be filed before the Directorate General makes any decision upon the relevant Industrial Design Application (Article 21 Law No. 31 Year 2000).
The provision for the Cancellation of a Registered Industrial Design is provided under Chapter VI Law No. 31 Year 2000. The proprietor of an Industrial Design Registration can voluntarily request for a cancellation of its Industrial Design by submitting a written request to the Directorate General of Intellectual Property Rights. Meanwhile any other interested third parties can file cancellation action to the Commercial Court (Article 38 cq Article 2 and Article 4 Law No. 31 Year 2000). The cancellation action must be filed with the Head of the Commercial Court in the jurisdiction of the defendant’s domicile or with the Head of Commercial Court of Central Jakarta in the case where the defendant domiciles outside the territory of Indonesia.