TAXES
LAW
4
LUBIS, SANTOSA & MARAMIS Law Firm
Trademark Law Implementing Regulation Enhances
Well-known Brands Protection
Inconsistency in the Indonesian Court’s View on the Enforcement of
International Arbitration Awards Containing Injunction Order
The long-awaited trademark law implementing regulation has
finally been issued. Minister of Law & Human Rights Regulation
No. 67 of 2016 on Marks Registration (“Regulation 67”)
addresses several crucial issues, including well-known marks
protection for both similar and dissimilar goods or services,
particularly matters relating to bad-faith registration based on
similarities to registered or well-known trademarks.
Regulation 67 provides that one of the factors in determining
whether a mark is well known is the degree of recognition it
enjoys in the relevant sector of the public - whether at the level of
production, promotion, distribution or sale of goods or services
bearing the mark. The regulation further sets out other factors
to be considered in determining whether a mark is well known,
including (i) sales volume and profit; (ii) brand’s market share;
(iii) geographical extent; (iv) duration of use; (v) promotion; (vi)
international registration; (vii) trademark enforcement; and (viii)
brand value.
These factors are also key in determining refusal of an application
due to similarities to well-known marks for both identical or
similar goods or services and dissimilar goods or services. For
On 7 May 2009, in the case between Astro Overseas Limited et
al. (the Claimant) and PT Direct Vision et al. (the Respondent),
SIAC Arbitration Tribunal rendered an Award under SIAC Rules
Number: 62 of 2008 containing injunction order which essentially
orders the Respondent to cease all relevant ongoing and future
legal actions taken by the Respondent. On 28 October 2009, the
Central Jakarta District Court issued a decree stipulating that,
among others, such SIAC Award is not executable because the
merits of the SIAC Award intervenes the Indonesian legal process
under the prevailing laws and regulations (“Astro Decree”). This
Astro Decree was affirmed by the Supreme Court of Indonesia in
its Judgment No. 01 K/Pdt.Sus/2010 stating that the injunction
order contained in the SIAC Award violates the souvereignty
of the Republic of Indonesia because no foreign power can
intervene an ongoing legal process in Indonesia, thus it violates
the public order.
However, on 12 December 2011, the Central Jakarta District
Court issued the exequatur decree No. 125/2011.Eks stipulating
that the SIAC Award ARB 102/10/MXM, in the case between
Newmont Indonesia Limited et al. (the Claimant) and PT Pukuafu
Arbitration
Kristian Takasdo Simorangkir, S.H
Associate
+622129035900
Indah et al. Respondent), is executable (“Newmont Decree”). It is
interesting because one of the dictas of the foregoing award is
to order the Respondent ceasing all relevant ongoing and future
legal actions taken by the Respondent. This order is basically
the same with the injunction order in Astro Decree, but the
Central Jakarta Distric Court (being the same court rendering
the Astro Decree) does not provide any elaboration on this order
and eventually declares the SIAC Award ARB 102/10/MXM is
executable.
The above shows that there is still an inconsistency among the
Indonesian courts (at least the Central Jakarta District Court) in
viewing the enforceability of injunction order in Indonesia.
dissimilar goods, however, Article 19(3) of Regulation 67 sets
out two additional requirements: the well-known mark owner’s
written opposition to the application at issue and registration of
the well-known mark.
Prior registration is thus paramount for mark owners if they are
to argue their case against potentially infringing applications
for dissimilar goods or services. Otherwise, there may be little
to no basis for the examiners to deny such applications filed in
different class(es) despite any bad-faith red flags. Also, brand
owners that fail to register their marks and file an opposition
action may stand little chance in litigation involving dissimilar
goods, as the judges will consider those two requirements when
deciding on such case.
Aga Nugraha S.H., LL.M
Advocate & IP Attorney
+62 812 8978 4040
Intellectual Property Rights
7
th
Edition | June 2017
