Indonesian trade secrets litigation delivers record damages

A longstanding trade secrets fight has been rumbling back and forth through the courts for years. Indonesian engineering firm PT Basuki filed a claim in 2008 against a local divison of Hitachi Construction and several individuals for trade secrets infringement. The issue related to boiler construction. PT Basuki alleged Hitachi's Indonesian entity and the individuals used its trade secrets to create another boiler.

The case was filed in the Bekasi District Court. However the District Court decided that the Commercial Court rather than the District Court was the correct forum because the case concerned the trade secrets law, which is a special law relating to IP and most IP cases go to the Commercial Court. The courts had previously heard a related industrial design case between the same parties too. However, the Supreme Court overturned the District Court case stating that although many IP cases are heard in the Commercial Court, for infringement the correct court is the place of domicile of the defendant.

So the case was retried, and in 2015 the Bekasi District court found for the Plaintiff awarding just under USD100,000 equivalent in damages against Hitachi. The case was appealed and the damages were increased enormously by the Bandung High Court.  The basis of the damages was 50% of the lost profits of PT Basuki for a 2 year period 2005-2007. This amounted to around three quarters of a million USD. An appeal to the Supreme Court was filed in November last year. 

Trade secrets cases and very large damages awards are both rare in Indonesia. This was a successful local company which felt its trade secrets had been stolen, leading to one of the largest IP damages awards ever in the country. The Supreme Court decision will be watched closely.

Christian Dior loses BABY DIOR appeal in Indonesia

Christian Dior's appeal to the Supreme Court against BABY DIOR in class 12 has failed. See here for details on the first instance decision in which Christian Dior sought to cancel BABY DIOR in class 12.
 
The cassation appeal to the Supreme Court was rejected. Christian Dior's huge portfolio of DIOR marks and its variations in various classes in Indonesia, did not include BABY DIOR which is a mark used elsewhere. Neither did their registrations include any class 12 marks. 

This case shows several difficulties protecting famous marks in Indonesia. First dissimilar goods protection has a somewhat uncertain status, with missing government regulations to blame. Some judges apply Art 16 (3) of TRIPS directly. Others as in this case, do not (arguably a TRIPS breach).

The second problem issue is bad faith. Too many cases are filed with weak or no evidence of bad faith, usually a bare conclusion based on similarity. This leaves a court able to say there is no evidence. Evidence preparation is critical.

Christian Dior has a second right of appeal, but the test for this appeal is much higher. Commentators say this shows that brand owners must register all their marks in all classes, but that is practically impossible. The system of cancellation is supposed to protect against trademark piracy like this.
 
 

Trade secrets, data privacy and Blackberry

Indonesia joined the club of nations including UAE, Saudi Arabia and India which have challenged RIM to open up its technology by either giving these governments access or establishing local servers which host the Blackberry service. Where other countries cited the need to obtain access to servers as being security related, Indonesian stakeholders  focussed on two other reasons. One was to reduce cost to users - but that came from the the Indonesian Telcos who claimed they pick up the tab for the increased cost of comms with RIM's Canadian servers.  The latest reason which appeared around the new year was that the Communications and Information Minister indicated that the ability to view pornography on BBs as they are locally known, was reason to ban the service. Unless they locate a server here of course. RIM are resisting, presumably to keep their technology secure and proprietary as well as keeping their customers emails and messages private. But RIM did open up it's messaging service in India on 13th January. Let's see if Indonesia closes RIM's browser service.