by Risti Wulansari , Michelle Dahl & Justi Kusumah

A well-known mark is generally considered to be a mark that has been widely used and registered as a trademark in various countries for a number of years and having obtained fame due to its reputation among consumers.

For some well known marks, their fame is beyond question due to availability and long term reputation on world-wide. Some examples of very well-known marks are SANYO, NESTLE, GIORGIO ARMANI, TOYOTA etc. For other marks, there are different shades of fame. For how many years must the trademark have been registered and in how many countries must it be used and known before the mark acquires recognition as a "well known" mark? This is an important question for trademark office arround the world as well known marks are accorded special legal protection under trademark law, even in juridictions where the well known mark may not yet be officially registered.

International Principles

The principal that special legal recognition should be extended to the rights and interest of owners of well-known marks is contained in Article 6bis of the Paris Convention of which Indonesia is a union country.

In more recent times, the Trade Related Aspects of Intellectual Property Rights (TRIPS) Treaty has addressed this issue further. Signatory countries (members of the World Trade Organization) are expected to obeserve in their laws the Paris Convention but to also extend the principles therein to services, that countries should define what is meant by "well-known", and that the treaty should also apply to goods and services which are not similar to those in respect of which a trademark is registered (Article 16 paragraph 2 TRIPS).

Protection of Well-known Marks in Indonesia

Indonesia is a member of the Paris Convention countries and is a signatory of the TRIPS agreement. The Indonesian Trademark Law, Law No. 15 of 2001 (the "Trademark Law") basically fulfils Indonesia's obligations under the Paris Convention and TRIPS agreement in that it specifically recognises in Article 6 that a mark cannot be registered in the Indonesian Trademark Office (TMO) if the relevant mark has similarity in principle (in its essential features) or as a whole to a well-known mark owned by another party for the same kind of goods/services not of the same kind. This means that, in theory, a well known mark is provided with protection by the TMO even without registration in Indonesia.

However no definition or explanation of what constitues a "well known" mark is contained in the law. As envisaged by the Paris Convention, it is up to each countries trademark authority to determine if a mark is well known or not in that country.

The Trademark Law has an "Elucidation" section, which is non binding but which provides some explanation of the meaning of Article 6(b). Basically, the Trademark Office should consider public knowledge of the mark in the relevant busioness field, promotional materials, level of investment in the mark in various countries and evidence of trademark registrations in a number of countries in respect of the alleged well known mark.

In 1987, when the old Trademark law was in place, the Indonesian Minister of Justice issued 2 regulations concerning "Rejection of Mark Application Having Similarity with the Name of Other Party". This regulation was subsequently replaced by the Decision of Minister of Justice in 1991. The later regulation contained additional terms for the definition and the criteria of a well-known mark.

However, the aforementioned regulation is no longer adopted in Indonesia. This is mainly because the regulation was not considered as sufficient to set out the criteria and requirements of a well-known mark. Therefore, the criteria and limitations for well-known marks have been and still is uncertain and the TMO has yet to have adequate guidance to determine what is a well-known mark.

Application of the Law by the TMO

Although Indonesia is TRIPS compliant in respect of the Trademark Law, the application of the law is often problematic. The TMO has staff who have often received insufficient training and who are poorly resourced. The office deals with a large number of applications and has a huge store of existing largely paper based (non-computerised) registrations.

As is the case in many other juridictions, there are many parties who are interested in imitating marks that are well known abroad in order to ride off the reputation and goodwill of trademark as established abroad or are simply trademark pirates who wish to acquire the mark and later sell it to the rightful owner for a handsome profit.

As a result of all of the above, frequently decisions are made by the TMO to register trademarks for third parties which are already well known and owned in Indonesia of elsewhere by established companies.

In an attempt to resolve the problem of confusion in application of the law as it applies to well known marks, in 1995, the TMO issued 2 editions of a "Green Book" called "Compilation of Well-Known Marks". Initially, the book was aimed at assisting the TMO examiners in examining mark applications on the basis of similarity with well-known marks as recorded in the Green Book. Another purpose of the issuance of the books was to provide information to the public concerning the existing record of well-known marks in order to avoid (or at least, to minimise) the possibility of a party attempting to register similar/identical marks to existing registered marks in Indonesia.

An owner of a well-known mark(s) could request its mark to be recorded in the Green Book by way of (i) submitting a formal letter to the TMO and/or (ii) a letter provided by an embassy of the country of origin which was addressed to the TMO requesting to the recordal of a well-known mark in the book. However, the book served simply as a compilation and thusm was not legally binding. Since the second edition of the "Green Book" the TMO has refrained from publishing further editions without specific reason.

Recommendations

Even if the TMO has not noted that a new trademark application conflicts with the existance of a well-known mark, the owner of a well known mark is given and opportunity to prove the fame of his mark during the publication stage of application for new trademark registratios by filing an opposition to a trademark application. As a matter of practice, in examining new applications, oppositions, rebuttals, etc., the TMO would usually require the following documents to prove the notoriety of a mark (where the relevant mark owner claims that its mark is well-known):

• Registrations in various countries;
• Documents evidencing the active and existensive use of the relevant mark in variuos countries; and
• Promotional materials of products using the marks in variuos countries.

Although there is no specific requirement on the quantity of documents to be submitted to prove the fame of a particular mark, the TMO would usually require evidence proving the extensive prolonged registration and use of the mark in a number of countries. What is "sufficient" depends on the TMO's wide discretion. The Indonesian law is not a precedent based legal system, and therefore neither the courts nor the TMO need feel bound by previous legal decisions concering the principle of what constitutes a well known mark.

Conclusion

In the absence of specific guidelines and established principles on the concept of well known marks, the wide discretion enjoyed by the TMO examiners can be applied without limitation. This can result in many anomalous decisions being made and much disappointment on the part of many owners of well-known marks.

As a result, all trademark owners should be especially vigilant in establishing and maintaning official trademark protection in Indonesia for their well-known marks. It is best to ensure that a complete set of registrations for a mark in a sufficient number of classes are secured at the earliest possible time, and that the Trademark Gazette be scrutinized regularly to promptly address attempted registrations of limitation marks. Full and complete records that pertain to the fame of the well known mark should be on hand to submit to the TMO to defend against later applications for confusingly similar marks.