Tips on protecting trademarks<\/p>\n
By James B. Lumenta<\/p>\n
JAKARTA (JP): The Trademark Law has undergone significant
\nchanges in the last few years in a bid to catch up with
\ninternational standards of protection, particularly with the
\nrequirements of the Trade-Related Aspects of Intellectual
\nProperty Rights (TRIPs) Agreement.<\/p>\n
Some main features of the new system introduced by the
\nrecently concluded draft legislation toward year 2000 could be
\noutlined as follows:<\/p>\n
* the purely \"first-to-file\" principle shall remain a
\nprerequisite for establishing trademark rights;<\/p>\n
* more relaxed formalities and relatively shorter time frame
\nin the process of trademark prosecution, -- it would only take 14
\nmonths to have a trademark registered, if there was no opposition
\nfrom a third party;<\/p>\n
* registration of a trademark license with the Directorate
\nGeneral of Intellectual Property (DGIP) is mandatory;<\/p>\n
* all civil proceedings in relation to trademark cancellation,
\ninvalidation and infringement actions shall be subject to the
\njurisdiction of a commercial court, instead of the current
\ngeneral district court (except in the case of criminal
\ncounterfeit actions), and with a faster process to conclusion
\nthrough a specified period of time provided under the
\nspecifically established judicial procedure;<\/p>\n
* adoption of unprecedented alternative dispute resolution
\nsystem, such as by arbitration for a more professional and
\nspeedier settlement of trademark disputes, will be possible,<\/p>\n
* stricter penalties, including a maximum seven-year jail term
\nand a maximum Rp 300 million fine for trademark counterfeiting.<\/p>\n
While on paper it all sounds pretty good, in practice things
\ncould work out to be far beyond our expectations. Since
\nenforcement has always been the most crucial issue in this
\ncountry, special monitoring is an absolute need. And to secure an
\noptimum protection for your trademarks, this article seeks to
\nprovide some recommendations on measures of crucial importance to
\nbe taken by a trademark proprietor.<\/p>\n
In Indonesia, unlike the United States and other common law
\ncountries, registration is a prerequisite to the establishment of
\nrights of a mark. Therefore, businesses should file an
\napplication for trademark registration as early as possible
\nbefore introducing a product or service here.<\/p>\n
Registration is critical not only in establishing rights, but
\nalso in protecting and enforcing such rights against any third
\nparties and other unscrupulous traders who may attempt to
\nregister the mark as theirs and use the mark, or one closely
\nresembling it, on identical or even related products and
\nservices. Under no circumstances could one initiate any legal
\naction against someone infringing on the mark, unless there was a
\nvalid registration or at least a pending application of the mark
\nin question.<\/p>\n
Under the prevailing system, there is special treatment and
\nwider protection for well-known marks, though the criteria
\nremains unclear and has given rise to much controversy. Neither
\nis there any distinction between \"famous\" and \"well-known\" marks
\nin Indonesia as recognized in many other countries.<\/p>\n
Nevertheless, one could establish a well-known status for a
\nmark in Indonesia by simply getting the mark recorded with the
\ntrademark office, following an application submitted along with
\nthe supporting documents, as pointed out below:<\/p>\n
* an authenticated or legalized copy of the registration
\ncertificate of the corresponding mark one has deposited for a
\nminimum three years in at least three other countries outside of
\nIndonesia;<\/p>\n
* certifying documentary evidence that the mark is still in
\nuse in Indonesia and overseas;<\/p>\n
* a statement issued by one's embassy in Indonesia or the
\nIndonesian embassy in one's own country certifying that the mark
\nis well-known.<\/p>\n
Such a record is entirely different from \"defensive trademark
\nregistration\", which is generally recognized in other countries,
\nsuch as Japan. Defensive recordal is simply an administrative
\nrecord for limited use within the jurisdiction of the trademark
\noffice per se. It is referred to as \"defensive\" since it serves
\nas an alternative for the mark to being qualified for broader
\nprotection in the absence of clear criteria to determine whether
\na trademark is well-known.<\/p>\n
The benefit of having the defensive recordal is that it may be
\nused by the registry (the trademark office) as reference to
\nreject unauthorized applications, and thus to prevent any other
\nparties, without the owner's consent, from at least registering
\nor renewing identical or a similar mark, even for goods or
\nservices which are not identical or similar to those of the
\ntrademark. As often as not, such references do also have -- to a
\ncertain extent -- some influence upon decisions handed down by
\nthe judiciary, despite the facts that inconsistency among the
\njudges was sometimes unavoidable.<\/p>\n
Another issue of no less importance is the maintenance of the
\nregistered mark through proper use. Failure to use the trademark
\nin commerce for three consecutive years from the registration
\ndate or the date of last use, or use of the mark in relation to
\ngoods or services which are not consistent with those for which
\nthe trademark is registered, would lead to the registration being
\nvulnerable to deletion for \"nonuse\".<\/p>\n
While notice of trademark registration in the form of a
\nregistration symbol is not mandatory under Indonesian law, use of
\nsuch a symbol does have a deterrent effect on other parties who
\nmight otherwise adopt a confusingly similar mark. Above all,
\nbusinesses should make sure that use of the mark on goods or
\nservices must be exactly the same as that shown on the
\nregistration certificate, otherwise they risk losing their right
\nto the mark!<\/p>\n
All trademark licenses must be validly recorded with the DGIP.
\nWhat would be the legal consequences if a trademark license
\nagreement is not recorded?<\/p>\n
Under the current legislation, unregistered licenses shall
\nremain valid and binding upon the parties to the agreement on
\ncontractual basis as provided under the general provisions of
\ncontracts under Article 1338 of the Civil Code.<\/p>\n
Things appear to be quiet different and somewhat tougher under
\nthe new system as introduced by the latest draft legislation and
\nif it is passed into law, the consequences of an unregistered
\nlicense would be deemed null and void; it would not have any
\nlegal effect upon the contracting parties, let alone all other
\nthird parties! In this case, therefore, if infringement occurs,
\nneither the licenser nor the licensee is entitled to take any
\nlegal action against the alleged infringer.<\/p>\n
Worse yet, such an unrecorded license mark would be vulnerable
\nto attack by third parties for nonuse, since use by the licensee
\nhere does not inure to the benefits of the licenser.<\/p>\n
As prohibited by the current law, the draft statute rules that
\nall license agreements \"shall not contain clauses which might
\neither directly or indirectly be prejudicial to the Indonesian
\neconomy or might otherwise hinder the potentialities of the
\nIndonesian people for acquisition and development of technology
\nin general\".<\/p>\n
In other words, clauses deemed to be harmful to the country's
\nnational economic interest or to the process of technology
\ntransfer must be avoided from trademark license arrangements, in
\nthat it is one of the main prerequisites for the government
\napproval of a license to be recorded.<\/p>\n
Unfortunately, both the present and the draft laws do not make
\nany further reference to what specific acts may be considered as
\nfalling within the category of being \"prejudicial\" to the
\nnational economy or \"hindering\" locals from technology
\nacquisition. It seems to be based on subjective interpretations
\nby referring to the common standards of fair business practices.<\/p>\n
Also worth noting is that a trademark license, under the
\nlegislation, is an exclusive license for the whole territory of
\nthe Republic of Indonesia, and the validity of which shall not
\nexceed the term of protection of the registered mark in question.
\nThis implies that at no time could an unregistered mark be the
\nsubject of a license under the Indonesian law. Should it happen,
\nsuch a license would be considered void ab initio.<\/p>\n
The writer is the chief executive partner of Amroos &
\nPartners, a senior intellectual property law firm in the country.<\/p>",
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