PROTECTION OF FAMOUS MARK UNDER LAW NO. 20/2016 ON MARK AND GEOGRAPHICAL INDICATION (FEBRUARY 2017)

PROTECTION OF FAMOUS MARK UNDER LAW NO. 20/2016 ON MARK AND GEOGRAPHICAL INDICATION

(February 2017)

Mark protection under Law No.22/2016 (“the Law”) is based on first to file basis of mark registration with the Directorate General of Intellectual Property of the Ministry of Law and Human Rights (“DGIP”). With regard to well-known marks protection as it is stipulated under Paris Convention and TRIPs Agreement to which Indonesia is a party, Indonesian Trade Mark Law particularly Articles 21 (b) and (c) of Law stipulate among other things as follows: 

a.   That, DGIP shall reject the application which attempts to register a mark in Indonesia for the goods and/or services which mark, basically or generally has similarity with the other party’s famous mark of the goods and/or services having the same type or, of the goods and/or services having other types which fulfilled certain requirements. No further explanation however on what such of other conditions are. (Article 21 (b) and (c) of the Law)

b.   That, DGIP may also reject a mark registration which is filed in bad faith. The applicant is deemed to act in bad faith if it has intention to imitate, copy, or follow which would create an unfair competition, or to mislead or deceive consumers.  (Article 21 (3) of the Law). 

c.   That, the owner of famous mark can request the cancellation or deletion of registration of certain mark which basically or generally has similarity with  its own famous mark as follows: 

The commercial court can also instruct an independent institution to do the survey in order to determine whether or not a mark is famous.

Notwithstanding the above, it is advisable for the owner of famous trademark to register its mark in Indonesia, as the Law provides better protection for registered marks. 

 

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