According to the jurisprudence of the Supreme Court of the Republic of Indonesia (which has permanent legal force) the determination of whether or not a mark is similar to another must be made as a whole, rather than being separated part by part. This is illustrated by some recent cases.
A decision of the Supreme Court No 2451 K/Pdt/1987 of April 13 1991, stated: “In order to determine whether or not there is similarity of the mark dispute, it must be seen as a whole and not detailing one by one or part by part that become the said mark.”
Another decision of the Supreme Court No 1053 K Sip/1982 of December 22 1982 stated: “Assessment of the similarity essentially is based on the existence of total appearance not compare the differences in parts of the mark.”
A decision of the Supreme Court, No 2140 K/Pdt/1989 of April 11, 1990, stated: “In differentiating a mark the consumers will be more attracted at first glance on the mark readout in a whole as well as the pronunciation of the mark.”
The explanation section of Article 6 (1) (a) of Law No 15 of 2001 on trade marks further stated: “What is meant by similarity is essentially resemblance which is caused by the presence of elements which are prominent between one mark and the other ones, which can raise the impression of the appearance of the rights’ equality on shape, how the placement, ways of writing or a combination of elements of sound existed in the said marks” (emphasis added).
Based on these statements, it can be concluded that the procedure for distinguishing a mark from other ones, includes:
– Distinguishing in a whole and not detailing one-by- one of the elements or parts of the mark.
– Considering the existence of the total impression between the marks compared.
– Viewing the readout as a whole as well as the pronunciation of the said mark.
– Taking into account the existence of the elements of a mark’s shape; its placement; how it is written; or a combination of these.
Source : http://www.managingip.com/IssueArticle/3375731/Archive/Indonesia-Determining-similarity-between-marks.html
Written by :
Nadia Am Badar, S.H
Agus Candra Suratmaja, S.P
Am Badar & Partners
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