Foreign company successfully opposes application based on unregistered trademark

Indonesia

Indonesia has a 'first-to-file' trademark system, in which protection over a mark is granted to the first applicant to submit an application for the mark and subsequently obtain its registration. In the course of the trademark registration process, trademark examiners conduct a search to ascertain whether the applied-for trademark is confusingly similar to prior registered or pending trademarks. If the applied-for trademark is found to be distinctive and not confusingly similar to prior trademarks, the trademark application will be published in the Official Gazette for three months. During this time, oppositions may be filed, and if there are no successful oppositions, the mark is accepted for registration.

Compared to the practices of other Southeast Asian countries, trademark examiners in Indonesia have a relatively broad discretion in conducting a substantive examination of the similarities between marks. While this generally means that trademark applicants can more easily register their trademarks, there is a flip side - trademark squatters pose a more significant threat.

Certain trademarks published in Indonesia may be confusingly similar or identical to trademarks that have been registered and/or used in other jurisdictions, but are not registered in Indonesia. According to Article 3 of Indonesia’s Trademark Law, if a trademark has not been registered in Indonesia, it does not receive any protection. This opens the door to trademark squatters, who can register trademarks in Indonesia that are owned and protected in other jurisdictions.

IP owners should therefore closely observe trademarks published in Indonesia and be prepared to file oppositions against confusingly similar or identical trademarks. However, examiners, who are focused on the first filing of the mark, have often refused oppositions and have instead chosen to stand with their decision. In addition, they rarely recognise the extra-jurisdictional rights of owners whose trademarks are not registered in Indonesia but registered in other countries.

In a move that may signal a departure from the status quo, Luckytex (Thailand) Public Company Limited has successfully opposed an Indonesian applicant’s published trademark, which bore similarities to Luckytex’s trademark. Luckytex’s trademark had not been registered or used in Indonesia. This successful opposition demonstrates a willingness on the part of examiners to accept opposition arguments based on unregistered trademarks, and indicates a shift in approach that aligns the country's practice with international practice.

In this case, Luckytex’s trademark LUCKYTEX had been registered in multiple jurisdictions worldwide, including the European Union, China, India, the United Arab Emirates and Vietnam. The applicant’s trademark, LUCK-TEX, was published in Indonesia before Luckytex had applied to register its mark in the country. 

As Luckytex’s trademark had never been registered or used in Indonesia, its opposition against the applicant’s published trademark was based on the registration of its marks in other countries. In addition, the opposition was based on Article 6, Paragraph 1, Point (b) of the Trademark Law, which states as follows:

The refusal of a trademark application that is similar to the basic elements of a well-known trademark for similar goods and/or services shall be decided by considering:

  • the general knowledge of the public with regard to the trademark;
  • the reputation of the well-known trademark obtained through continuous and significant promotional activities and investment by the owner in some countries around the world; and
  • registrations of the mark in various countries.

Furthermore, prior to filing the opposition, Luckytex filed a trademark application in Indonesia to demonstrate good faith and an intention to trade products in the country under its LUCKYTEX trademark. To support the argument that the trademark LUCKYTEX is a well-known trademark, the trademark application was submitted with copies of Luckytex’s trademark registration certificates obtained in other countries.

After considering the opposition, the examiner issued a decision in Luckytex’s favour, concluding that the applicant’s trademark LUCK-TEX was “free-riding on, imitating or copying the well-known trademark LUCKYTEX, which has been registered in various countries" and, therefore, the application for LUCK-TEX could be "categorised as an application filed in bad faith”. The trademark LUCKYTEX was considered to be well known on the basis of its registration in various countries. The LUCK-TEX mark was thus successfully opposed and its registration was rejected.

This decision indicates that Indonesia’s examiners are beginning to recognise the extraterritorial status of trademarks, as opposed to solely adhering to familiar practices under the first-to-file system. This is certainly a step forward for owners of trademarks that are well known in jurisdictions other than Indonesia who wish to register their marks in the country.

In addition, under Indonesia’s draft Trademark Law, all trademark applications will be published prior to the substantive examination stage, which will encourage trademark owners to be more vigilant in monitoring marks in the Official Gazette and to file oppositions before similar or identical trademarks proceed to registration.

Kasama Sriwatanakul and Ilda Nursiah, Tilleke & Gibbins, Jakarta

Tilleke & Gibbins represented Luckytex (Thailand) Public Company Limited in this case

Get unlimited access to all WTR content