It is worth noting, first of all, that Indonesia's IP laws do not explicitly stipulate the IP liability of platforms. Nevertheless, platforms usually respond to takedown requests as part of their risk management. Further, these platforms implement takedown frameworks to take advantage of the safe harbour provisions under the regulations discussed in the next section.
Takedown requests are still the typical mode of enforcement in respect of trademark infringement on both e-commerce and social media platforms. In the case of large-scale infringement by an e-commerce infringer, a brand owner may conduct offline investigations to trace the physical location of the e-commerce infringer and thereafter proceed with a police complaint or escalate to civil action.
It has not reached the stage where brand owners are compelled to sue platforms because the platforms are still sufficiently responsive to takedown requests, although it is common for brand owners to complain of delays and unreasonable requests for verification of the brand owners’ rights. One common complaint is the platforms' refusal to take action on lookalike products.
It is also common to see switch-and-bait tactics on platforms, where online merchants use a popular third-party trademark to advertise or increase the chances of being searched for on e-commerce platforms while the products themselves may not be infringing, considering that Indonesia trademark law does not protect trade dress.
Strictly speaking, it is not a trademark infringement to use such brand names in listings (in order for the listing to show up when the third-party brand name is searched) considering that the products themselves are not infringing. In such a scenario, it is recommended that the brand owner also secure trademark registration in Class 35 for the service specification "online retail”. This is a powerful weapon against such tactics. Platforms will usually respect Class 35 registrations to take down switch-and-bait advertising. Such a strategy is necessary because Indonesia has no unfair competition law to deal with this problem.
The relevant regulations on safe harbour are:
Costs can range from $800 to $1,800 for a relatively straightforward cease-and-desist letter/takedown. If it becomes necessary to escalate to a raid action, costs can be more than $10,000. Raid actions must be initiated by a criminal complaint with either the police or the Directorate General of Intellectual Property investigator (PPNS). These departments will treat the complaints as full criminal investigations. PPNS can handle such criminal complaints, but it will have to work with the police and get their support in the course of the investigation, the raid action and the eventual submission of the case file to the public prosecutor for criminal prosecution if there is no settlement.
There is no administrative action option in Indonesia. Because of the high cost, it is usually recommended that brand owners proceed with cease-and-desist letters or takedown requests with platforms before considering escalation to a criminal complaint. Civil action may also warrant consideration, especially where the infringement is not pure counterfeiting (eg, when dealing with non-identical trademarks) where the enforcement authorities are skeptical about establishing infringement.
We have yet to see litigation against e-commerce or social media platforms (or user-generated content (UGC) platforms. The only significant decision is one that came from the Constitutional Court (Decision No 84/PUU-XXI/2023) expanding Article 10 of the Copyright Law (28/2014) to include UGC platforms. This constitutional case was brought by local broadcasting companies PT Aquarius Pustaka Musik and PT Aquarius Musikindo. The parties sought relief to reinterpret the scope of Article 10 of the Copyright Law, which originally dealt with facility managers' liability. The Constitutional Court decided that this provision should be extended to cover UGC platforms in addition to physical locations.
Article 10 of the Copyright Law originally read:
"Managers of business premises are prohibited from allowing the sale and/or reproduction of goods resulted from copyrights and/or related rights infringements in the business premises under their management
[translated from Bahasa Indonesia: “Pengelola tempat perdagangan dilarang membiarkan penjualan dan/atau penggandaan barang basil pelanggaran Hak Cipta dan/atau Hak Terkait di tempat perdagangan yang dikelolanya.”]"
Following the Constitutional Court decision, it now reads:
"Managers of business premises and/or user generated content (UGC) based digital service platform are prohibited from allowing the sale, showing, and/or reproduction of goods resulted from copyrights and/or related Rights infringements in the business premises and/or digital service under their management.
[translated from Bahasa Indonesia: Pengelola tempat perdagangan dan/atau Platform Layanan Digital
berbasis User Generated Content (UGC) dilarang membiarkan penjualan, penayangan, dan/atau penggandaan barang hasil pelanggaran Hak Cipta dan/atau Hak Terkait di tempat perdagangan dan/atau Layanan Digital yang dikelolanya”]"
Therefore, UGC platforms should be aware that the part of the decision (excerpt below), and particularly the part in bold, may suggest some level of active monitoring in order to "detect early" infringement.
"Because, in the current era of digital technology, UGC-based digital platforms can definitely detect
early copyright violations with the help of the technology they have...
Therefore, Article 10 of Law 28/2014 needs to be strengthened and expanded to be able to cover the
governance and provision of security technology for every UGC-based digital service platform, so that it can prevent copyright violations in Indonesia, namely by requiring managers of technology/UGC-based digital platforms to ensure that the content displayed or loaded is not content that violates statutory provisions."
Thus, this decision is relevant to copyright as a ground for complaint. There was no basis for asserting secondary liability, and rights holders had to frame their demand on the basis on primary infringement. However, it is worth noting that there is still no concept of secondary liability in the case of trademark infringement.
This was first published in World Trademark Review in July 2024.
