Protection of Intellectual Property or IP is one of the essential assets for entrepreneurs and enterprises in running their businesses.
This is because ownership of a protected IP can protect the owner’s rights and support the business activities related to the use of such IP, even products in the business activity itself.
IP protection in Indonesia has been accommodated in various kinds of laws and regulations, with different mechanisms in each type.
For example, the protection of IP is in the form of trademarks (merek) and copyrights (hak cipta), each protected by separate applicable laws and regulations.
However, can an IP that has been registered as the object of copyright protection, be registered as a trademark as well?
Trademark
Based on Article 1 Number 1 of Law Number 20 of 2016 concerning Marks and Geographical Indications (Law No. 20/2016), a trademark is a sign that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color composition, in the form of two-dimensional and/or three-dimensional, sound, hologram, or a combination of two or more of these elements to distinguish goods and/or services produced by persons or legal entities in the activities of trading goods and/or services.
The main value of a trademark as protection of IP is the distinguishing and identification aspect of one particular trademark for certain goods and/or services compared to the other goods and/or services in a similar business sector, as well as in general. Such distinction creates value for the trademark, as a certain trademark associated with publicly well-known, high-quality goods and/or services will have better value than other similar goods and/or services.
The trademark registration mechanism in Indonesia follows the “first to file” principle. This principle gives everyone who registers a mark first the right to protection for the mark.
This is confirmed by the provisions of Article 3 of Law no. 20/2016, which explains that the right to a mark is obtained after the mark is registered. In other words, the protection of a new mark will occur if the mark has been registered.
Types of Marks
Based on Article 2 Paragraph (2) of Law no. 20/2016, the brand consists of two types, namely:
1. Trademark
A trademark is a mark used on goods traded by a person or several people or a legal entity to distinguish them from other similar goods.
2. Service Mark
A service mark is a mark used on services traded by a person or several people together or by a legal entity to distinguish them from other similar services.
Copyright
Copyright is the exclusive right of the creator that arises automatically based on declarative principles after work is realized in a tangible form without reducing restrictions by the provisions of laws and regulations (Article 1 Number 1 of Law 28 of 2014 concerning Copyright (Law No. 28/ 2014) In Indonesia, the copyright adheres to the principle of first to use.
Copyright is intellectual property, which gives the creator or recipient the exclusive right to publish or reproduce the creation or give permission for it without reducing the restrictions according to the applicable laws and regulations.
The main value of Copyright as the protection of intellectual property is protecting the moral right of the creator who creates the creation for the first time after such creation is introduced to the public. Therefore, not just anyone can copy and use the copyrighted creation and benefit from it.
Copyright Protected Creations
The creations that can be protected by copyright include works in the fields of science, art, and literature as follows (Article 40 of Law No. 28/2014):
- Books, pamphlets, presentations of published papers, and all other written works;
- Discourse, lecture, speeches, and other similar creations;
- Teaching aids made for the benefit of education and science;
- Songs and/or music with or without text;
- Drama, musical drama, dance, choreography, wayang, and pantomime;
- Fine artwork in all forms such as paintings, drawings, carvings, calligraphy, sculptures, statue, or collages;
- Works of applied art;
- Architectural works;
- Maps;
- Batik art or other motif art;
- Photographic works;
- Portrait;
- Cinematographic works;
- Translation, interpretation, rechauffe, anthology, database, adaptation, arrangement, modification, and other works resulting from the transformation;
- Translation, adaptation, arrangement, transformation, or modification of traditional cultural expressions;
- Compilation of works or data, both in a format that computer programs or other media can read;
- A compilation of traditional cultural expressions as long as the compilation is an original work;
- Video games; and
- Computer programs.
Copyright protection is not given to ideas or ideas because the copyrighted work must have a distinctive form, be personal and show authenticity as a creation born based on ability, creativity, or expertise, so that the work can be seen, read, or heard. Thus, the protection of creation arises automatically since the creation is manifested in a tangible form.
However, if the copyright owner decides to register his or her creation at the Directorate General of Intellectual Property of the Ministry of Law and Human Rights (DJKI), the creation will receive a creation registration letter which can be used as initial evidence in court if a dispute arises in the future against the creation (Article 64 paragraph (2) of Law No. 28/2014).
Registering an IP that has been registered as Copyright, as a Trademark
In Indonesia and under Law No. 20/2016, there are no limitations regarding whether a copyrighted IP cannot be registered as a Trademark.
As long as the registered creation complies with the mark criteria in the form of a sign to distinguish goods and/or services produced by persons or legal entities in the activities of trading goods and/or services, it can be registered as a Trademark.
However, the opposite doesn’t apply. Under Law No. 28/2014, there are restrictions regarding registering a Trademark-registered mark for Copyright protection. Article 65 of Law No. 28/2014 states that a distinguishing logo or mark that is used as a trademark in the trading of goods and/or services, as well as symbols of organizations, business entities, or legal entities, cannot be registered as Copyright.
Furthermore, Article 68 Paragraph (2) of Law No. 28/2014 explains that in the case of an application for copyright registration, DJKI will examine to find out whether the requested work has similarities or not with other intellectual property objects.
Therefore, while a copyrighted creation can be registered as a Trademark, the opposite doesn’t apply. A registered Trademark already has value as a distinguishing mark from other goods and/or services.
If anyone can copyrighted an already registered Trademark as their own creation, there is a risk of the Trademark being registered as a Copyright by an unrelated party to the use and benefit of the Trademark.
If you need consultation and assistance regarding Intellectual Property, you can contact BPLawyers via ask@bplawyers.co.id or 082112341235.