200 trademark owners lose their rights

JAKARTA (JP): The Indonesian Trademark Office has denied to process about 200 trademark applications from industrial countries because of a new requirement imposed suddenly last week by the director general of copyrights, patents and trademarks, a noted patent lawyer said yesterday.

Lawyer J.B. Lumenta, of Amroos Law Consultants, said an instruction issued by the director general on Jan. 29 and effective Feb. 1, stipulated all trademark renewal applications should be supported with a statement from the authority in charge of the relevant business sector certifying that the marks are being used.

"By denying the renewal applications, the statutory deadline for filing a renewal application has been passed and juridically the right to the trademark will lamentably come to an end after its expiry date," Lumenta said.

The statutory deadline for filing a renewal application is six months before the registration expires.

"We find it hard to see and accept the logic and sense of the sudden instruction," Lumenta said.

Director General S. Kayatmo said his instruction, No.H- UM.06.10-1, was meant to realign the administration of trademark registration.

Lumenta said the policy lacked adequate legal grounds and, worse still, was prejudicial to trademark owners and to Indonesia's image as a member of the Geneva-based World Trade Organization.

Indonesia is a party to the GATT Agreement on Trade Related Intellectual Property Rights.

"The most frightening thing looming large before the eyes of a trademark owner is the possibility that during the vacant period of protection a third unrightful party may file an application for registration of an identical trademark," Lumenta said.

He said that pursuant to Article 8 of Government Regulation No.23/1993 on the procedure for the application of trademark registration, an application for renewal of trademark registration shall mandatorily be accompanied by a declaration that the trademark is still being used.

"However, the regulation does not require that the declaration shall be an official statement issued by the authority or institution in charge of the relevant business sector, as mandated by the director general's instruction," Lumenta said.

Lumenta quoted Article 9 of the same regulation as defining the declaration required by Article 8.

The definition of a declaration meant it might just as well be submitted or made by the trademark owner itself or be issued by the authority in charge of the relevant business sector, he said.

"So the regulation actually grants the trademark applicant a choice between the two options," Lumenta said.

He lambasted another requirement on copyright, as stipulated in the instruction, as adding to the confusion.

The instruction stipulates all words of creation for which a trademark registration has been applied for shall be supplemented by a copy of the pertinent copyright registration certificate granted by the copyrights directorate.

"Where in the world is a copyright to be established by registration?" Lumenta asked. (vin)