Protecting A Well-Known Mark In Indonesia
The relevant provisions under the Law Number 15 Year 2001 regarding Trademark issued on 1 August 2001 (“TL”) are as follows:
(1) An application shall be refused by the Directorate General if the relevant mark:
(b) has similarity in its essential part or in its entirety with a well known mark owned by another party for the same kind of goods and/or services;
(2) The provision as referred to in paragraph (1) point (b) is also applicable to goods and/or services which are not the same kind provided that it fulfills certain conditions that will be further regulated by Government Regulation.
(3) An application shall also be refused by the Directorate General if the relevant mark:
(a) constitutes or resembles with the name of a famous person, photograph, or name of a legal entity owned by another party, except with a written approval from the authorised person”.
Further in the elucidation of article 6 paragraph (1) (b) of TL provides that to prove a well-known mark in Indonesia, the following evidence isrequired :
- general public knowledge regarding such a mark in the field;
- the reputation of such well-known mark obtained from aggressive and substantial promotions;
- investments in some countries by the owner of the mark;
- trademark registrations in several countries.
The recent cases involving a well-known mark are not encouraging. One landmark case involves Pierre Cardin, the famous French fashion brand. In 1981, Pierre Cardin filedasuit before the Commercial Court (Decision No. 363/1981/Pdt.G) to cancel the trademark registration “PIERRE CARDIN” owned by Wenas Widjaja in goods of class 03 based on well-known mark,but was rejected by the Court. At the cassation (Decision No. 2468K/Sip/1982), the Supreme Court (despite one dissenting opinion) upheld the decision of the lower court.
In 2015, Mr. Pierre Cardin filed suit before the Commercial Court (Decision No. 15/Pdt.Sus-Merek/2015/PN.NIAGA.Jkt.Pst) to cancel the same “PIERRE CARDIN” in class 03 owned by Alexander Satryo Wibowo (as the last assignee from the initial owner, Wenas Widjaja),but this time the suit was based on the name of a famous person (article 6 paragraph (3) (a) of TL) considering that Pierre Cardin is a famousinternationaldesigner. Again, the Court rejected the claims and at the cassation (Decision No. 557K/Pdt.Sus-HKI/2015), the Supreme Court upheld the decision of the lower court.
Among the considerations of the Supreme Court werethe following:
- When the trademark application was first filed by the infringer, the trademark in question must already have been well-known. In this particular case, Wenas Widjaja first filed the trademark application on 29 July 1977 and Alexander argued that in those days, Pierre Cardin was not a well known mark;
- Alexander is not an applicant in bad faith because he is the last assignee of PIERRE CARDIN mark;
- The infringed mark is not entirely similar due to the additional words “Product by PT. Gudang Rejeki utama” and “Made In Indonesia” present in the trademark owned by Alexander.
Currently Pierre Cardin is filing a petition for Reconsideration at the Supreme Court. It is not yet clear whether there will be a happy ending for Mr. Pierre Cardin.
Another sensational case involves the “IKEA” trademark belonging to the Swedish INTER IKEA SYSTEM B.V.. IKEAwas sued in 2013 by a local company, PT. Ratania Khatulistiwa,for deletion of their class 20, 21 trademark registrations “IKEA” with registration dates in 2010 and 2006 respectively on the ground of non-use,because Ratania desired to use the “ikea” trademark in both classes of goods. Ratania was filing two trademark applications of “ikea” in class 20, 21 and apparently Ratania anticipated that their trademark applications would be refused due to the existence of IKEA’s trademark registrations hence this suit was pursued.
Ratania used article 61 paragraph (2) (a) of TL which states:
“A deletion of trademark registration from the General Registry of Marks can be made on the initiative of the Directorate General if:
- Such mark has not been used forthree consecutive years in trade of goods/services as of the date of registration or of the last use, unless there is a reason which is acceptable to the Directorate General;”
The Commercial Court in their Decision No. 99/PDT.SUS-MEREK/2013/PN.Niaga.Jkt.Pst (later upheld by the Supreme Court in 2015 under Decision No. 264K/Pdt.Sus-HKI/2015) did not take into account that IKEA is a well-known mark and strictly applied the three consecutive years of non-use rule as of the date of registration,and accepted the non-use evidence of a market survey report presented by Ratania. In short,Ratania won (despite one dissenting opinion) and could have the instruction to delete the two trademark registrations in class 20, 21 belonging to IKEA.
Unbeknownst to Ratania, IKEA had refiled two trademark applications in class 20 and 21 in 2012 so in effect, the decision to delete the two trademark registrations did not have any impact on the business of IKEA in Indonesia because IKEA’s trademark applications filed in 2012 were approved by the Trademark Directorate. Concurrently the Trademark Directorate refused the “ikea” trademark applications filed by Ratania so the matter was solved in favor of the Swedish retailer IKEA.
How about the claim of a well known mark against different classes of goods/services in which they are not well-known?
In this respect, the Supreme Court has issued a circular known as SEMA Number 03/BUA.6/H.S/SP/XII/2015,dated 29 December 2015,that “a lawsuit to cancel a trademark which is substantially similar or entirely similar with a trademark belonging to another party for goods or services not of the same kind, the decision shall be declared ‘inadmissible’. According to the legistic principle, the provision of Article 6 paragraph (2) of Law Number 15 Year 2001 regarding Trademark has not been effective since the Government Regulation as referred to in such provision has not yet been issued.”
SEMA (Circular of the Supreme Court) is a circular made by the head of the Supreme Court which contains guidelines for the courts in carrying out their functions. This issuance of SEMA03/BUA.6/H.S/SP/XII/2015 means that one can not succeed to sue another trademark owner based on a well-known mark if the infringer’s trademark is in a different kind of goods or services.
It is not clear when such Government Regulationswill be issued, however Ministerial Regulation is said to be in the process of being enacted as TL has recently been amended by Law Number 20 Year 2016 regarding the Trademark issued on 25 November 2016,and such Ministerial Regulation will also stipulate the implementing regulations regarding well-known marks.
Olga K Santoso can assist in the application for registrations of trademark, patent, copyright, industrial design and as she is a licensed advocate, she can also assist in the litigation procedure involving infringements.
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