The Registration System, 1961

Historically, since 1961, trademark protection in Indonesia adopted the “first-use-principle” whereby a trademark is registered to the proprietor based on its first use in the jurisdiction. There was no protection for well-known marks.

The situation for well-known mark owners was unsatisfactory as illustrated by an important case that occurred in 1996 between U.S. food producer, Nabisco, Inc. and local company PT Perusahaan Dagang dan Industri Ceres (Ceres). Ceres produced and marketed biscuits under the Ritz brand, which had been a well-known Nabisco brand in the U.S. and several other countries since 1941.

However, Ceres was the proprietor of the registered trademark in Indonesia since 1960, and therefore was considered the legal owner of the brand. Following the Trademark Law No. 21 of 1961, the first party to register a trademark in Indonesia was the owner of the trademark and thereby Ceres won the trademark battle against Nabisco.

The Constitutive System, 1992

However with the enactment of the new trademark law in 1992, Indonesia changed its first-use-principle to a first to constitute system, where a trademark is considered born at the point of time that its registration is recognized. In this new trademark law that was enacted in 1992, recognition for well-known marks was included.

Compliance with TRIPS, 1997

To complete the commitment in providing protection to well-known marks, certain provisions of the law were amended in 1997 as a result of Indonesia’s participation in the World Trade Organization (WTO). This amended law also authorized the Indonesian Trademark Office (TMO) to reject any application, which contained elements of similarity to the existing well-known mark or names. These amendments made Indonesia compliant with the TRIPS Agreement to which it is a party.

Legal means to protect owners of well-known marks were provided in the new law. Opposition mechanisms were made available against any trademark application that has total or partial similarity with a well-known mark. It is also now possible to apply to revoke a registered trademark that is similar to a well-known mark.

Indonesia is obliged to recognize Article 6bis of the Paris Convention and Article 16 para 2 of the TRIPS agreement that a mark cannot be registered by the TMO if a mark or its essential features are similar on the whole to a well-known mark owned by another party for the same kind of goods or services.

New Trademark Law, 2001

On 1 August 2001, a new trademark law was enacted which contained new provisions with regard to well-known marks. It introduced guidelines of what constitutes a well-known mark in what is known as the Elucidation to the trademarks law. These guidelines amount to a binding interpretation to the relevant parties such as the TMO and the courts.

Indonesian Guidelines

• Public knowledge of the well-known mark in the particular business sector
• Reputation of well-known mark through extensive promotion, investment in various countries
• Evidence of trademark registration in several countries

The Indonesian guidelines bear similarities to WIPO’s Joint Recommendation which was the result of the work of a committee that was set up by the Paris Union and WIPO to determine guidelines on well-known marks due a lack of a definite concept of the same. As WTO members were urged to adopt the said recommendations Indonesia did so and adopted some of them in its own Guidelines, opening the door to a more consistent definition of well-known marks internationally.

The new law gives protection to well-known marks, in that registration can be refused in respect of marks that are similar or identical to that of a well-known mark for similar goods or services. As to identical or similar marks for dissimilar goods, there is as yet no specific regulation prohibiting the registration of such marks, but the TMO and the courts have on occasion exercised their discretion in disallowing such registrations.

Owners of well-known marks can apply for the cancellation of a trademark registration on the grounds that the registration was made in bad faith or that the well-known mark was made known to the relevant public.

The new law also allows civil infringement cases to filed at the Commercial Court if unauthorized use of a registered trademark for similar goods or services occur (but not to dissimilar goods or services). However, under the new laws no protection is extended for unauthorized use of an unregistered well-known mark.

An example of a case applying the new law is:

Reemtsma Cigarenttenfabriken GmbH v NV Sumatra Tobacco Trading Company

Supreme Court

The Supreme Court has overturned a Commercial Court decision and ordered the deletion of Sumatra Tobacco’s DAVIDOFF trademark for cigarettes from the trademark register.

Reemtsma is a German licensee of Swiss company Davidoff. Pursuant to Article 63 of the Indonesian Trademark Law, Reemtsma appeared on behalf of Davidoff in an action to have Sumatra Tobacco’s registration of the DAVIDOFF mark deleted from the register.

In two separate rulings, the Commercial District Court refused to delete Sumatra Tobacco’s mark whilst rejecting Reemtsma’s claim that Sumatra Tobacco had fraudulently purchased the DAVIDOFF trademark.

On appeal, the Supreme Court reversed the above decision and found that:

• Reemtsma provided evidence that the Swiss company’s DAVIDOFF mark is a well- known worldwide;
• Sumatra Tobacco’s DAVIDOFF trademark misled consumers as to the origin of the products; and
• Sumatra Tobacco’s claim that its mark is well known in Indonesia was contradicted by

(i) the fact that it only sells its DAVIDOFF cigarettes across three provinces and not the whole country, and

(ii) a survey conducted in 10 wholesale shops in Jakarta and Medan, the capital of the North Sumatra province where Sumatra Tobacco is based, which showed that Sumatra Tobacco’s DAVIDOFF cigarettes were not known there.

Recommendation

In the event the TMO overlooks a new trademark application that would be conflicting with the existence of well-known mark, the owners of a well-known mark have the opportunity to prove the fame of their mark during publication stage of the new application, by filing an opposition to the said trademark application. As a matter of practice, in examining new applications, oppositions, rebuttals, etc., the TMO would usually require the following documents to prove the notoriety of the mark (where it is claimed as well-known):

• Registrations in various countries
• Documents evidencing the active and extensive use of the relevant mark in various countries; and
• Promotional materials of products using the marks in various countries

Although there is no specific requirement to the quantity of documents that can be submitted to prove the fame, the TMO usually requires all evidence proving the extensive prolonged registration and use in a number of countries. However, as to what constitutes sufficient proof of fame is entirely at the discretion of the TMO. Since Indonesian is a civil law country the legal system is not precedent based, and therefore neither the courts nor the TMO are bound by previous legal decisions concerning principles of what constitutes a well-known mark.

Although there is a certain degree of protection against the unauthorized use of well-known marks, due to the lack of awareness and education on certain these aspects of trademark law, there seem to be inconsistentcy in the outcome of various decisions from the TMO and the courts.

Therefore, owners of the well-known marks should take the initiative to deter these infringers from using their well-known mark ensuring that their well-known mark are protected by registration and to constantly monitor the conduct Gazette for new applications being advertised for opposition purposes. This will help that their own marks are adequately protected.