WIPO Recommendation towards the determination of Well-known Marks
Last year, Indonesia had a trademark dispute that involves a comic publisher from United States of America, DC Comics. DC Comics set to be the rightful owner of superman logo after commercial court judges grant the DC comic suit regarding Superman, ‘S’ Logo, and painting that had been used by PT Marxing Fam Makmur, as superman wafer manufacturer. The verdict from the Judges at the Central Jakarta Commercial Court, namely “To declare the plaintiff’s registered mark ‘SUPERMAN’ as a well-known mark. To declare the plaintiff as the party entitled to the mark “SUPERMAN” in Indonesia. ”
Regarding to International Trademark Association, A famous or well-known mark is a trademark that, in view of its widespread reputation or recognition, may enjoy broader protection than an ordinary mark. In other words, the mark is broadly known and holding a recognized reputation.
In Indonesia, this well-known mark is mentioned in Law Number 20 of 2016 concerning Marks and Geographical Indications, to be precise in Articles 21 b and c, which reads:
“The application is rejected if the Mark has similarities in essence or in its entirety with:
- Well-known trademarks owned by other parties for similar goods and / or services;
- Well-known trademarks owned by other parties for goods and / or services that are not of the same type that meet certain requirements; or…. “
The article clarifies that if a mark application contains similarity with another party’s well-known mark of a certain goods and/or services, the application will be rejected. One of the criteria of well-known mark in Indonesia is stated in 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”.
On the other hand, World Intellectual Property Organization provides guidelines to determine whether a mark is a well-known mark through the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. It is a Joint Recommendation between Paris Union for the protection of industrial property and The Assembly of World Intellectual Property Organization (WIPO).
Below are the Joint Recommendation to determine whether or not a mark is a well-known mark:
- the degree of knowledge or recognition of the mark in the relevant sector of the public;
- the duration, extent and geographical area of any use of the mark;
- the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
- the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
- the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
- The value associated with the mark.
- Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO)