Trademark law in Indonesia
From HAKItree
Contents |
Prior law
Indonesian trademark law dates back to 1912. The Colonial Trademark Law of 1912 remained in force as a result of the operation of transitional provisions contained in the 1945 and 1949 Constitutions. The 1961 Trademark Law replaced the Colonial Trademark Law. However, it was largely a restatement of the 1912 law.
In 1992 a new Trademark Law was enacted, replacing the 1961 Law. The new law introduced new procedures for the registration of trade marks and recognized Indonesia’s ratification of the WIPO Trademark Treaty.
In 1997, the Law was amended to bring it in line with the Gatt-TRIPs Agreement. The amendments included protection for indications of origin and geographical indications. The amendments also changed Indonesia from a ‘first to use’ to a ‘first to file’ jurisdiction.
Current law
In 2001, a new Trademark Law was passed. Several important changes were made in the Law, including:
- the introduction of provisional court orders (interim injunctions)
- the appointment of the Commercial Court to handle trademark cases
- heavier criminal penalties.
Criticisms of the current law
The current law is generally considered to be sound. However, secondary legislation in the form of government regulations or Supreme Court guidelines is required to give full effect to the following:
- registration of trademark licences (Article 43(1))
- protection of well known trademarks (Article 6(2))
- interim judicial decisions (Article 85)
- protection of trade dress
Registration of trademark licences: Article 43(1) gives the owner of a registered trademark the right to licence other people to use the trademark. The law further provides that the licence must be registered with the Trademark Office, and a licence agreement that is not registered will have no effect on third parties. Article 49 provides that the requirements and procedure for the registration of licences will be further provided in a Presidential Decree. To date, the Presidential Decree is outstanding, disadvantaging trademark owners and their licensees.
Protection of well known trademarks: Under Article 6(2), the Trademark Office is required to reject an application for the registration of a trademark if the applied trademark is similar in principle or in entirety to an already well-known trademark owned by another party for goods and/or services that are not of the same type, as long as they fulfil particular requirements as may be further provided in a government regulation. To date, the government regulation is outstanding. To prevent the registration of a well-known mark for dissimilar goods or services, the owner of the well-known mark must establish that the application should be rejected on one of the other available grounds, such as bad faith.
Interim decisions: Article 85 gives the Commercial Court the authority to issue an interim decision banning the import of goods that infringe a trademark. The Supreme Court has not issued an interim decision since the law came into effect in 2001. Guidance from the Supreme Court is required in the form of Supreme Court guidelines to provide direction to the Commercial Court on the implementation of these provisions. Until Supreme Court guidelines are issued, trademark owners are unable to take swift action against unlawful use of their trademarks.
Trade dress protection: Under the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property, Indonesia agreed to implement national legislation providing for trade dress protection and effective protection to well-known trademarks. Until specific legislation is passed, unauthorised use of trade dress and well-known marks can only be stopped if there is also trademark infringement or the the unauthorised use of another form of IP.
Proposed amendments
In 2007, the government began the process of reviewing all the IP laws. This review was stalled by the legislative and presidential elections that took place in the first half of 2009. The government completed the first round of consultation at the end of 2009 and issued a draft Trademark Bill. The draft does not make any significant changes to the existing law.
The majority of amendments fall into two categories:
- Codification of existing practices: For example, the draft Bill specifies that the statutory limitation of 5 years that applies to cancellation proceedings does not apply if the grounds for cancellation is bad faith. This exception was formerly contained in the Trademark Law’s elucidation and therefore was not binding.
- Speeding up processes: Reduction in the time it takes to register a trademark. Most significantly, trademark applications will be published for opposition purposes before they are examined by the Trademark Office. This will reduce the trademark examination process by around 12 months. Another example is the time the Commercial Court has to issue a decision. This has been reduced from 90 working days to 60 working days.
There are a number of other improvements:
- All penalties for trademark infringement will be increased. The Police will be able to detain a trademark infringer for up to 60 days before trial. This will improve the ability of the Police to complete their investigation and also provides the trademark owner with what is effectively a preliminary injunction. The only exception is infringement of a geographical indicator. An infringer cannot be detained before trial.
- The Bill provides for filing using the Madrid Protocol system. Significant improvements will need to be made to the Trademark Office’s registration process, particularly the timeframes before this can be implemented however. This will be the subject of further government regulation.
- Similarity with a prior application has been added as an absolute ground for rejection of a trademark application. Under the current law, the Trademark Office must wait until the prior applied mark is registered before rejecting a subsequently filed trademark application.
- The Bill makes a number of Trademark Office practices statutory obligations.
The draft Bill does not address some of the more significant deficiencies in the Trademark Law, most notably the absence of any prohibition against the use of well-known marks. Under the Trademark Law, a well-known mark can only be enforced in Indonesia if it is also registered.
Next page: What is a trademark?
See also
- Registering trademarks
- Transferring trademarks
- Licensing trademarks
- Removing a trademark from the Register
- Trademark infringement
- Passing off, unfair competition
