Indonesia: Joint ownership of trade mark rights
Nowadays, it is common for two or more companies to collaborate in developing certain projects for their common benefit. With the increasing number of companies entering into collaborative innovation, there is more joint ownership of intellectual property in Indonesia. Joint ownership of IP rights often occurs when two or more parties collaborate on a certain project. Each party in the project will then own a certain portion of the work product. The prevailing laws in Indonesia provide no specific guideline with regard to joint ownership of IP rights. Therefore, unless agreed otherwise, each joint owner will own an equal portion of the jointly owned IP rights.
While the prevailing laws allow joint ownership of intellectual property, there are some risks. Any action taken with regard to jointly owned IP rights, such as giving a licence to a third party, taking action against unauthorised use, and disposal of the IP rights, requires a joint decision by all owners.
The Trade Mark Law does not allow ownership of similar trade marks in the names of different parties. If a trade mark application/registration is jointly owned by two or more parties, each co-owner will be considered as a different party from the joint owners. Therefore, any prior trade mark application/registration owned by the joint owners will likely be cited against similar new trade marks which are filed by each individual owner. Similarly, if each individual owner has a prior trade mark application/registration, any subsequent trade mark application in the name of the joint owners which incorporates a similar element to the prior trade mark application/registration will likely be rejected due to its similarities with the prior trade mark application/registration. As letters of consent and co-existence agreements are not acceptable to overcome citation during the trade mark examination process, the subsequent trade mark application is not likely to be granted registration.
Given the above, it is advisable to avoid jointly owned IP rights. In the case of trade marks, you may choose not to obtain registration of a trade mark in the name of the joint owners which incorporates the house mark of each individual owner. Should the parties opt to own the IP rights jointly, to avoid any conflict, it is essential to make written arrangements in relation to ownership of IP rights before commencement of any work. As an alternative to joint ownership of IP rights, an arrangement which may be considered is that one party owns all the IP rights and grants a licence to the other party/ies. Compliance with the newly regulated IP rights licensing recordal must also be considered to validate the use of such rights.
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