Background
Company A is an underwear producer and trader that registered two industrial designs: ‘Multicolour Flower’ packaging in 2008 and ‘Yellow-Green’ packaging in 2003. These designs were also promoted overseas (e.g. at an exhibition in Dubai, United Arab Emirates, in 2009).
On 26 August 2013, Company B filed a request to register Multicolour Flower and Yellow-Green as industrial designs, despite the fact that these two designs had previously been registered by Company A and were listed on the Register of Industrial Designs in Indonesia.
Action taken
Company A filed a lawsuit against Company B before the Indonesian Commercial Court, claiming that this registration of Multicolour Flower and Yellow-Green imitated the industrial designs they had previously registered and did not comply with the requirement that an industrial design must be new (has not previously been disclosed to the public) at the time of filing.
Company B stated that they had used Multicolour Flower and Yellow-Green packaging since 2000 or at least 2005.
Outcome
The Supreme Court concluded that Multicolour Flower and Yellow-Green were no longer new because Company B had used them for 13 years, or at least for 8 years. Both Companies A and B did not comply with the novelty requirement according to the Industrial Design Law because the designs in question had been used before the filing dates of the applications. Accordingly, the Multicolor Flower and Yellow-Green registrations were cancelled and the designs were designated as belonging to the public domain (the public can use them and they cannot be registered).
Lessons learned
To obtain industrial design protection, the design must be new at the filing time. Any use or disclosure of a design prior to filing can result in its cancellation.
Even if a design registration certificate has already been granted, the registration can still be revoked due to a lack of novelty at the time of filing. Before filing an application for a design, companies should conduct searches to check whether the design already exists. A comprehensive search can save significant amounts of time and resources for businesses – if they try to register a design that has been already registered or previously used it may be refused.
Case source: http://asean-ipcaselaw.org/system/files/caselaw/IDCL2015000000554.pdf