Customs Office Seized Goods based on Alleged IP Infringement
Recently, the Customs Office seized suspected fake pens from entering the territory of the Republic of Indonesia. The pens are counterfeit goods alleged of infringing the Standard AE7 trademark owned by PT Standardpen Industries ("PT SI"), which is recorded at the Customs Office. The seizure occurred at the Tanjung Perak Port, Surabaya, and as a result 858,240 pens bearing the Standard AE7 trademark were seized. These pens were imported by PT Putra Alka Mandiri ("PT PAM") from China.
A judge from the Surabaya Commercial Court examined the suspicious pens jointly with representatives from the Customs Office, Directorate General of Intellectual Property ("DGIP") PT SI and PT PAM. According to the DGIP's expert statement, there is similarity in principal between the trademark embedded on the imported pens and PT SI's trademark. The inspection of the pens resulted in a decision by the Surabaya Commercial Court to reinforce the seizure, and consequently PT SI can take further legal action by initiating a criminal and/or civil lawsuit against the infringement.
Legally, Government Regulation No. 20 of 2017 on Import and Export Control for Goods Suspected of Infringing Intellectual Property Rights ("GR No. 20/2017") allows the Customs Office to temporarily seize any imported or exported goods that are suspected of infringing another party's trademark or copyright if such trademark or copyright has been recorded at the Customs Office.
The Customs Office's authority is further cemented by the enactment of the Commercial Court Regulation No. 6 of 2019 on Suspension Order ("CCR No. 6/2019"), which allows the trademark owner or copyright holder to submit a suspension order petition of products that are alleged to have infringed a trademark or copyright that has been recorded in the Customs Office to the Commercial Court based on the provisional seizure by the Customs Office. Further information on intellectual property recordation at the Customs can be found in our previous client updates on New Regulation on Customs Recordation and Indonesian Customs Recordation: Ready for Implementation.
The seizure of PT PAM's pens marked the first time that the Customs Office seized suspicious goods based on intellectual property recordation at the Customs Office. This shows that the Indonesian government is serious about protecting the local industry and their intellectual property rights. We expect that this case will lead to an increase in the number of intellectual property recordation at the Customs Office, which is beneficial not only for intellectual property owners in protecting their trademark or copyright, but also the government in suppressing intellectual property infringement and the distribution of fake products in Indonesia.
AHP Client Alert is a publication of Assegaf Hamzah & Partners. It brings an overview of selected Indonesian laws and regulations to the attention of clients but is not intended to be viewed or relied upon as legal advice. Clients should seek advice of qualified Indonesian legal practitioners with respect to the precise effect of the laws and regulations referred to in AHP Client Alert. Whilst care has been taken in the preparation of AHP Client Alert, no warranty is given as to the accuracy of the information it contains and no liability is accepted for any statement, opinion, error or omission.