The small subsidiary of a French jewelry manufacturer having developed its activities in Indonesia, distributes a line of rings, bracelets and earrings created in France. New collections are marketed every 6 months. As it takes a long time to register an industrial design in Indonesia (around 24 to 36 months) and the registration fees are high, the manufacturer has decided not to file for the protection of his designs and models for its collections in Indonesia.
In the meantime, he has been informed of the existence of cheaper imitations of his jewelry on the Indonesian market and sold under another brand.
The French manufacturer has not brought any lawsuit to put an end to the infringement committed by the Indonesian company, taking into account the fact that the Community design, under which the jewelry collections are protected in Europe, is a territorial right , and that it cannot be applied in Indonesia.
Despite the financial damage, the scale of the infringement and the attack on its reputation, the French manufacturer has so far not brought any action before the Indonesian courts with a view to obtaining compensation, wrongly assuming that 'There is no legal basis in this country for this type of action.
Lessons to be learned
- The trade dress of a product can be protected not only under the laws of trademarks, designs and models, but also under the laws of copyright.
- It is true that the geographical scope of the protection granted to designs and models is limited and that it 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 form of a product (earring, bracelet or ring, for example) can be protected by copyright. This copyright gives its holder the right to prevent any copying. Copyright protection automatically applies in all States signatory to the Berne Convention (and therefore also in Indonesia), as long as the work is created in any of these countries.
- Protecting jewelry under copyright law seems to be a longer and more costly strategy than trying to protect the corresponding designs. It would have been appropriate for the French manufacturer to register its copyright in Indonesia to prove that it is the holder in the case it would have been necessary to have it respected.
- The French manufacturer could have brought a lawsuit against the Indonesian company to put an end to its infringement of copyright. He could have issued a restraining order to the infringing dealers. Given the financial damage, the scale of the infringement and the damage to its notoriety, the French manufacturer could have subsequently brought an action before the courts in order to claim damages for infringement of the right to author.