19 November 2019, 10:56 AM
A small branch of a French jewellery manufacturer open in Indonesia distributes a successful line of rings, bracelets, and earrings designed in France. New collections are available on the market every 6 months. Due to the relatively long period of time needed to register an industrial design in Indonesia (about 24 months to 36 months) and high registration fees, the company decided not to apply for design protection for its collections in Indonesia.
At the same time, the company has become aware of cheaper imitations of its jewellery becoming available on the Indonesian market under a different brand.
The French company did not take any action to cease the infringement by the Indonesian company, taking into consideration the fact that the community design, under which the jewellery collections are being protected in Europe, is a territorial right, and cannot be enforced in Indonesia.
Despite financial damages, the scope of the infringement and the harm done to its reputation, the French company so far has not brought any legal action before the judicial courts in Indonesia, seeking compensation, assuming erroneously that there is no legal basis in Indonesia for that kind of actions.
- The trade dress of a product can be protected not only under trademark laws and design laws but also under copyright laws.
- It is true that the geographic scope of protection for designs is limited and depends on the place of registration. Consequently, the protection obtained for the physical appearance of a product (design) will be limited exclusively to the territory of registration. On the other hand, the physical shape of a product, such as earrings, a bracelet, or a ring could be the subject of copyright. Copyright confers on its holder a right to prevent copying. Copyright protection arises automatically in every country which is a signatory to the Bern Convention (thus, also in Indonesia), as soon as the work is created in any country which is a signatory to the Bern Convention.
- Protecting jewellery under copyright provisions seems a more cost and time effective strategy than seeking design protection. It would have been advisable for the French company to register copyright in Indonesia as proof of ownership in case enforcement is needed.
- The French company could have taken actions to cease copyright infringements in Indonesia. A warning ‘cease and desist’ letter could have been sent to the dishonest retailers. Considering the financial damages, the scope of the infringement, and the harm done to its reputation, as a next step, the French company could have brought legal action before the judicial courts, seeking compensation claiming as a basis the copyright infringement