Dong-A Pencil Co., Ltd (“Dong-A”) is an established manufacturer of stationery and office supplies based in Seoul, Korea. Established in 1946, Dong-A has been producing writing instruments and the like for over 65 years, so the fact that its products are distributed throughout the world and have gained considerable repute should come as a surprise to few.
It is common in business that where there are successful products or services, competitors will be instantly attracted to the concept, like bees to honey, resulting in the establishment of businesses with similar or identical products or services, whether through legal or illegal means.
Being so successful and well-known in its industry, Dong-A naturally became a target of these third parties. The company found many similar or identical products, sold under a different trademark, which were distributed in Indonesia, particularly in Medan, North Sumatera. Dong-A came to be aware that these products imitated the whole design and/or appearance of their products, and conducted further investigation.
Based on what was subsequently revealed through the investigation, Dong-A made a report to DGIP’s IP Investigation Unit. The IP Investigation Unit conducted several inquiries into the matter and discovered that the party responsible for the imitation of Dong-A’s products was one Mr. Elmin, a businessman who owns several stationery shops in Medan, one of them being in Sun Plaza Medan.
In cooperation with the Police (Special Criminal Investigation Unit) from Medan, the IP Investigation Unit raided and confiscated goods from Mr. Elmin’s shop in Sun Plaza Medan, alleging violation of Article 9 of the Law on Industrial Designs, where:
The Industrial Design holder shall have the exclusive right to exercise the Industrial Design Right he/she/they holds and to prohibit other people to, without his/her/their consent, make, use, sell, import, export, and/or distribute the goods assigned with the Industrial Design Right. Exclusive right is the right only granted to the Industrial Design Right holder for a specified period of time to exercise himself/herself/themselves or license the use of his/her/their right to another party. Accordingly, no other parties may exercise the Industrial Design Right without the consent of the holder. The right may be transferred to another party through inheritance, bequest, will and testimony, agreement, or other processes.
All stationery sold by Mr. Elmin used Dong-A’s registered designs. The investigators also revealed that Mr. Elmin owned a warehouse in Dadap, Jakarta, which they also raided, finding and confiscating many stationery products that were replicas of Dong-A’s designs, all stocked and ready for distribution throughout Indonesia, namely Padang, Pekanbaru, Palembang, Lampung, Bandung, East Java, Central Java, Borneo, and Celebes.
The case is currently being processed by the DGIP and the Police, who have yet to hand it over to other institutions for further legal processing.
If you or any of your clients face similar challenges in Indonesia, do contact us for advice on the steps to resolve the problem. We hope that the designs that you or your clients own have been registered in Indonesia, as that should be the first step in protecting the design in the Republic.
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