The protection of well-known trade marks in Indonesia is regulated by Article 4, Article 6 paragraph (1.b) and Article 6 paragraph (2) of the Trade Mark Law No 15 of 2001. According to Article 4, a trade mark shall not be registered on an application made by an applicant with bad faith. Meanwhile, Article 6 paragraph (1.b) states that an application shall be rejected by the Directorate General of Intellectual Property Rights of Indonesia if the trade mark is similar in principle or in its entirety to an already well-known trade mark owned by another party for goods and/or services of the same type.
The rejection of an application whose similarity in principle or in entirety to a well-known trade mark for goods and/or services of the same type is determined by observing the public’s general knowledge of the trade mark in the particular business sector. In addition, it is necessary to observe the reputation of the well-known trade mark which can be achieved through intensive and extensive promotions and investments in a number of countries by its owner, and also evidenced by the trade mark registration in several countries.
Furthermore, Indonesia has ratified the Paris Convention by Presidential Decree of Indonesia No 15 of 1997 and Trademark Law Treaty by Presidential Decree of Indonesia No 17 of 1997. Due to this ratification, Indonesia has been strongly protecting well-known trade marks.
According to the Ministerial Decision of the Justice Minister of Indonesia No M-02-HC.01.01 1987, a well-known trade mark is a trade mark that has been known and used in Indonesia for a long time by a person or legal entity for certain types of goods (for similar goods).
Meanwhile, according to Indonesian jurisprudence No1486 K/pdt/1991, the criteria of judging a well-known trade marks in Indonesia is “if the trade mark has been circulated out of the regional boundaries and international boundaries, has been circulated out the country of origin, and has been evidenced by the certificates of trade mark in various countries”.
However in practice, sometimes there is a registered mark which has similarities to a well-known trade mark which is also listed. When this happens, the concerned party may file a request for cancellation of the registered mark to the Indonesian Commercial Court under Article 68 of paragraph (1) and (3) of Trade Mark Law No 15 of 2001.
Indonesian judges will be given the authority to determine whether the trade mark includes a well-known trade mark or not based on the aspects mentioned above. If these aspects are still insufficient, the Indonesian Commercial Court may order an independent institution to conduct a survey to decide whether the trade mark is well-known or not, and that becomes the basic rejection.
In practice, Indonesian judges will declare that the trade mark includes the well-known trade mark if the trade mark has many registration certificates that are granted in other countries.
Therefore, trade mark registration in Indonesia is very important, considering that Indonesia is the fourth largest population in the world.
Source : http://www.managingip.com/IssueArticle/3303454/Archive/Indonesia-Well-known-trade-mark-criteria.html
Written by :
Agus Candra Suratmaja
Am Badar & Partners
JL Wahid Hasyim No 14, Jakarta 10340, Indonesia
Tel: +62 21 398 37314
or +62 21 398 37315