Indonesia has introduced a new regulation to deal with the registration of well-known trademarks. Justisiari P Kusumah and Siti Mariam Nabila of K&K Advocates discuss what it means for trademark owners.
The Indonesian government has issued a regulation that addresses trademark registration procedures, which also specifically regulates criteria for a trademark to be considered as a well-known trademark in Indonesia. The law addressing trademark registration procedures, which also specifically regulates criteria for a trademark to be considered as a well-known trademark in Indonesia, is the Minister of Law Regulation No. 67 of 2016 on Trademark Registration (Regulation 67/2016). This regulation defines implementing rules of Law No. 20 of 2016 on Trademarks and Geographical Indications (Trademark Law).
The Trademark Law stipulates that a trademark application can be rejected in the event the trademark has similarity in principle with the well-known trademark. However, the scope of well-known trademark has never been clearly defined in the previous Trademark Law. Regulation 67/2016, for the first time, specifies the criteria for well-known trademark in Indonesia which relates to the following aspects:
1) The level of public knowledge or acknowledgement regarding the trademark in related business;
2) Sales volume and profit gained by the owner from trademark usage;
3) Market share controlled by the trademark in relation to the goods/services distribution in the public;
4) Coverage of the trademark usage;
5) Duration of the trademark usage;
6) Intensity and promotion of the trademark, including value of investment in promoting the trademark;
7) Registration and application for registration of the trademark in other countries;
8) Enforcement of the trademark and acknowledgement of the trademark as a well-known trademark recognised by authorised institutions;
9) The value of the trademark gained from the reputation and the quality assurance of the products protected by the trademark.
Prior to the issuance of the Regulation 67/2016, the application of well-known trademark under the law is often problematic. The determination of “well-known” trademark solely relies on the discretion of the trademark examiners, which can be applied without limitation. Unfortunately, the trademark examiners at the TMO have often received insufficient training and have poor accesses to resources. This can result in many inconsistent decisions being made in the past, and much disappointment on the part of many owners of well-known trademarks. It is not uncommon that decisions are made by the TMO to register trademarks for third parties in Indonesia, which are already well-known-trademark elsewhere by established companies. Therefore many owners of well-known trademarks are still being damaged by the fact that their trademarks were imitated by registrations obtained by third parties.
The well-known trademark owner can now breathe a sigh of relief that the regulation introduces the possibility for the owner of a well-known trademark, which has not obtained a registration of its trademark in Indonesia, to show the attempt to protect their rights from any unlawful conduct by third parties which may jeopardise the well-known trademark owner’s reputation, including by way of filing trademark opposition or civil claim.
Goods and services
The recognition of well-known trademark could also extend upon different classes of goods/services. However for this particular protection, it is subject to the following requirements:
a) the owner of well-known trademark must file an opposition against a particular similar conflicting application;
b) the relevant well-known trademark has been registered in Indonesia.
Official trademark protection
In addition to the above, it is still advisable that the well-known trademark owner is aware in establishing and maintaining official trademark protection in Indonesia for their well-known trademark. It is best to ensure that a complete set of registrations for trademark in a sufficient number of classes are secured at the earliest possible time, and that the Trademark Gazette be examined regularly to promptly address attempted registrations of imitation trademarks.
Trademark cancellation claim
As often happens in many other jurisdictions, there are many parties in Indonesia who are interested in imitating well-known foreign trademarks. The act of infringement is done to ride off the reputation and goodwill of the well-known trademark that has been established abroad but has not yet been registered in Indonesia, or simply trademark squatters who wish to acquire the trademark and later sell it to the rightful owner for a handsome profit.
In a matter of practice, the Regulation 67/2016 has facilitated the well-known trademark owner that has not yet obtained registration in Indonesia, to file cancellation claim on the basis of trademark registration which is filed by third party with bad faith. The Regulation 67/2016 provides clearer guidance for the judges to identify the well-known trademark, and will also be beneficial for the well-known trademark owner to assess what on what evidence can be presented before the panel of Judges in the cancelation proceedings.
The registration of trademarks in Indonesia, despite the different specification of goods/services covered, could obtain wider protection for the well-known trademark owner, especially during the publication stage, of which the well-known trademark owner, theoretically, has stronger legal ground in filing opposition against the trademark application in different classes. The criteria set out above have facilitated the well-known trademark owner to prove the fame of their trademark, since Article 21 paragraph (1) (c) of Trademark Law provides further protection for well-known trademark, regardless of different classes involved subject to the abovementioned requirements. The Regulation 67/2016 issuance is an attempt to resolve the problem of confusion in application of the law as it applies to well-known trademarks.