With a population of 278 million, Indonesia remains an important market for many businesses. Every year, the country receives around 100,000 domestic trade mark applications and the number has been growing in the past five years. Foreign filers are also keen to protect their marks in Indonesia, filing 11,000 applications annually, though their activity is growing at a slower rate.
Historically, infringement of well-known marks and bad faith applications have been an issue. Based on data related to 400 trade mark oppositions from 2022 to 2023, we analyse trends and provide advice for rights holders.
The majority of oppositions were filed against trade marks in classes 25, 9, 3 and 35, which account for 23%, 23%, 21% and 15% of all oppositions filed between 2022 and 2023, respectively. This corresponds with the most popular classes for trade mark applications, according to data from the Indonesian IP office (DGIP)’s 2022 annual report.
Source: Rouse
For many years in Indonesia, trade marks that are similar – or even identical – to well-known trade marks have been filed in class 25 for fashion-related goods. Luxury and fashion brands from Europe and the United States appear to be popular among trade mark squatters. As a result, the commercial court has seen 67 trade mark disputes involving class 25, at an average of seven disputes per year, according to our data.
Recently, the problem of similar trade mark filings began to spread to classes 9 and 35, for goods and services related to software, online and e-commerce industries. This is in line with the rapid development of digital and online industries, accelerated by the pandemic.
Accounting for over 80% of successful trade mark opposition decisions between 2022 and 2023, “similarity with prior (Indonesian) trade mark registration” is the most accepted grounds by the trade mark office. This shows that it is important to file applications in Indonesia to obtain prior rights.
Other grounds, such as “similarity with well-known trademark” and “bad faith application” followed as the second and third most accepted ground, respectively. However, there was a significant gap between these grounds and “similarity with prior mark”.
Source: Rouse
Based on our data and experience, the well-known mark argument has higher chances of being accepted if:
This is despite the fact that there is no legal requirement for a mark to be in use in Indonesia before it is recognised as well-known. One possible reason is that trade mark examiners may be more familiar with marks that they are aware of.
As for the bad faith argument, the likelihood of its acceptance on its own or with a well-known mark is higher if the mark is almost identical or if the opposing party can provide evidence of bad faith (e.g, documents that show that the applicant is a former employee, or the applicant has a history of copying well-known marks).
Other possible grounds would be existing copyright protection. Usually, this ground has higher chances of success if evidence of copyright can be submitted, including copyright recordation in other jurisdictions.
Unfortunately, there is no guarantee that the trade mark office will cite prior registered marks during examination, as the practice amongst examiners is inconsistent. Although the marks may be almost identical, sometimes the specification of goods and services may be considered dissimilar even if the applications are filed in the same class. Hence, some court cancellation actions involve very similar marks for similar goods, which had passed the examination stage at the trade mark office.
Further, without oppositions, examiners will have no basis to reject applications on well-known mark and bad faith grounds. Once the third-party mark is registered, the only way to cancel the mark is through expensive court cancellation actions.
Unlike lengthy processes in other jurisdictions, trade mark opposition in Indonesia is relatively simple – all evidence must be submitted at the time of filing the opposition and within two months of publication. Once the brief is submitted, the opposing party waits for the decision, which is expected in nine to 12 months.
Trade mark owners should put in place watch notices for key marks and ensure that they have a comprehensive trade mark portfolio in relevant classes. Depending solely on overseas trade mark registrations and overseas use may not be advantageous, given that the conservative approach of the trade mark office in examining trade mark oppositions places more emphasis on prior Indonesian trade mark registration as the basis for successful oppositions.
Since many similar trade marks were filed in the fashion and digital platform industries over the past few years, rights holders operating in these industries must pay closer attention and strengthen their trade mark portfolio.
Trade mark owners are also encouraged to gather and manage evidence of use, especially in Indonesia. Such preparation is crucial for effective arguments claiming well-known mark and bad faith filing in oppositions.
The data from 2023 highlights the importance of being vigilant and well-informed to protect trade mark rights at the registry level in Indonesia, especially since the only way to remove a registered trade mark is through expensive court actions.
However, decisions on oppositions are being issued more quickly, within nine to 12 months. We hope that with evidence, the trade mark office will take into account more arguments based on well-known marks and adopt a more robust approach to reject third-party bad faith applications. It would be an encouraging sign for legitimate brand owners.
This article was first published by World Trademark Review in January 2024.
