This content is from: Trademarks

Interview: Prudence Jahja, partner, Januar Jahja & Partners

In our latest Women in IP interview, Indonesian IP partner Prudence Jahja speaks to Alice O’Donkor about her tips for success and typical challenges faced by IP practitioners in Indonesia and how to overcome them.

Jahja_Prudence_300As a child, Prudence Jajha was introduced to the IP field by her father, a trade mark lawyer and one of her biggest influences. Before founding Januar Jahja & Partners (JJP) over 30 years ago, Januar Jahja worked for the oldest IP firm in Indonesia for 12 years. His IP career spans over four decades. Jahja says: “He actually never forced me to be a lawyer like him. However, in my early years, he tried to involve me in a lot of discussions about IP, such as: Do you know what trade mark is? Do you know what its purpose is? Why are trade marks important?”

“I graduated from high school and immediately knew that I wanted to go to law school. I even knew what topic I wanted to write about for my thesis. It was all about trade marks - the protection of well-known trade marks in Indonesia.”

After finishing law school in 2006, Jahja joined Januar Jahja & Partners where she worked for two years before moving to Germany to complete a LL M degree. She gained an internship at an IP boutique in New York and went on to be a judicial intern at the US Court of Appeals for the Federal Circuit. It is there that Jahja came across a variety of IP cases mostly related to patents and other legal matters. Jahja says: “These experiences helped show me the international nature of IP, so when I returned to Indonesia in 2012, I had a much better idea of what was expected of me as an IP professional.”

“I have been working at the firm ever since, first as an associate then a senior associate before being promoted to partner in May 2016. Even though my father is the founding partner, I feel like he made me earn each position at the firm. I mean, it has taken 10 years!”

Know your market

Jahja oversees the international department at JJP which provides prosecution, enforcement and litigation matters for non-Indonesian clients, though she also handles matters for a number of domestic companies. Jahja says: “Indonesia seems to deal with IP differently than most other jurisdictions, so one of my main tasks on a daily basis is to advise our clients, before they take action, to make sure they are aware of and taking into account the specific system here.”

Jahja adds: “Indonesia is also the largest trademark jurisdiction (by volume) in south-east Asia and has been for a while.” While the majority of trade mark applications in Indonesia are filed by local applicants, Jahja notes, domestic filing comes with its challenges: “Unfortunately, there is still the ongoing problem of bad faith applications, which means that there is a lot of junk in the system. As such, I also spend a lot of time drafting search reports, oppositions, rebuttals to oppositions, objections, and appeals to the Trade Mark Appeals Commission.”

Always in favour of challenge, Jahja says: “My favourite thing about being an IP professional in Indonesia is that you never know what kind of work you will receive when you wake up in the morning.” She adds: “Often times, there are emails from new clients who ask for your assistance solving really complicated IP matters. It really makes me happy when these people trust you and in the end, they want to keep working with you.”

Legal uncertainty

For as long as Jahja can remember, IP has been part of her life. Among many things, she appreciates the opportunities to travel all over the world and meet friendly people in the same line of work. One thing Jahja confesses not to like as much is the inconsistencies in Indonesian IP enforcement: “In my opinion, the biggest challenge for IP in Indonesia is the gap between the laws as written and the ability to enforce them. This has been an ongoing problem for a while and applies not only to trade marks but to all aspects of IP.”

“Enforcement generally is expensive with highly unpredictable results, due to capacity issues with both the police and the courts among other issues. Often times, judges do not have any specific IP training and perhaps do not fully understand the laws they are supposed to apply - especially for patent cases.”

As the discrepancies in Indonesian IP leads to “legal uncertainty”, Jahja says: “Trying to provide clients with practical advice is sometimes difficult.”

“Although Indonesia is a civil law jurisdiction, there are a lot of times when things in practice do not happen according to how they are regulated in statute. Thus, in certain situations, it may not even be possible to provide a ‘correct’ answer, which can be difficult for me and clients to accept.”

Jahja says the best way to deal with uncertainty is to “explore all possible options before litigation and enforcement actions, such as warning letters, settlement and negotiations”. She adds: “When these options are not possible, then litigation and enforcement actions can be viable alternatives, but the key is to communicate to the client, up front, the reality of these options because they can be unpredictable, regardless of how strong the case may seem.”

Indonesia’s new trade mark law: opportunities missed

In spite of all the challenges in Indonesian IP law, there have been developments. Last year, a new trade mark law was passed. Important changes include an update to the definition of a trade mark to include non-conventional marks such as three-dimensional marks and a pre-grant opposition system, by which trade marks are published two months before substantive examination.

Indonesia’s new trade mark law brings fresh challenges for trade mark owners
Andrew Diamond, partner at Januar Jahja & Partners, reviews Indonesia’s new trade mark law sixth months from enforcement. Highlighting a particularly burdensome issue, he writes: “We can now see that there will be essentially two separate application systems running in parallel – one for applications filed before November 25 2016 processed under the old trade mark law, and one for applications filed on or after November 25 2016 processed under the new law.”

Diamond continues: “As a result, the Indonesian trade mark office is now essentially running two trade mark prosecution systems in parallel, one for applications under the old law and one for applications under the new law. This applies not only to examination standards but also to publication for opposition, rejections and appeals to the Trade Mark Appeal Commission (TMAC), among other things. Therefore, a brand owner could have two pending trade mark matters in Indonesia being prosecuted/argued under two different laws.”

Diamond also observes that due to the introduction of electronic filing for new trade mark applications and renewals, Indonesia has one system for electronic filings and another for manual filings. Read the full article here.
Speaking on the new trade mark law, Jahja says: “It has some good provisions that will help towards harmonisation but overall I think that maybe this was a big missed opportunity to really address some of the core problems with the administration and enforcement of trade marks in Indonesia. For example, the new law did not add the possibility of appealing the rejection of an opposition, which would have provided parties with a very useful alternative to costly and unpredictable litigation.”

The new trade mark law also included provisions for Indonesia to join the Madrid Protocol. “However,” Jahja adds, “this will have to wait for further government regulations to be issued, which might take another year or two.”

“It is also possible that a new industrial design law will be passed soon, since the three other major IP laws have already been revised recently.”

Nobody is perfect

As the daughter of the founding partner, partner and manager of the firm’s international department, Jahja has worked hard to mark her mark and learned a lot along the way. She says: “From my career so far, I have found it very important to be responsive and straight to the point when providing opinions and advice.”

One minor drawback, Jahja says, is her “perfectionist mentality”: “I hate making mistakes. It is sometimes difficult for me to accept that nobody is perfect. She adds: “In these types of situations, my job can become more of that of a communicator than a lawyer, because I am put in the position of having to explain a confusing legal system without confusing the client.”

To other women in the profession, Jahja offers some practical advice: “Work harder than everyone else and that is what will set you apart. This is based on something my father used to tell me all the time: ‘Work all the time unless you are deathly sick or it’s Chinese New Year.’ I guess I took that to heart and it has worked well for me.”

To women in IP who do not speak English as a first language, Jahja says: “The international language of IP and law in general, is English and for those of us who have to use our second or third on a daily basis, I think it is very important to be able to communicate in a clear and professional manner, as close to perfect as possible, because it really will facilitate communication with your clients and make you a more effective advocate for them.”

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