Overview

In a crowded marketplace, brands often compete not only on quality but also on the memorable appeal aspect through their trademark. When similarity trademark are crosses into imitation of a registered trademark, it can quickly become a legal liability. A trademark may seem safe because it has been used publicly in market and may even have been registered, but the risk often only become apparent when objections, claims, or legal actions arise.

Despite the fact that trademarks have long been regulated in Indonesia, disputes and risks surrounding unauthorized use of trademark remain far from resolved and continue to be a recurring issue that must actively anticipate. The unauthorized use of a trademark is not always immediately recognizable as infringement, especially if a trademark concerned has been registered despite its similarity to an existing trademark. In practice, this creates a gray area where the line between acceptable similarity and illegal imitation becomes increasingly difficult to determine.

Indonesia’s trademark system follows a “first to file” principle under Law No. 20 of 2016 on Trademarks and Geographical Indications (UU MIG), it means that trademark rights are granted to the party that registers the trademark first, not necessarily the party that uses it first. Early registration is not merely a formality, but a crucial defensive measure. Without registration, even a well-established brand may be placed in a weaker legal position. When infringement occurs, there are several legal avenues available as follows:

1. Criminal Enforcement : Creates immediate pressure and direct impact but often involves longer process and the focus is not on commercial recovery (Article 100 – 101 of UU MIG).

2. Civil Claim                  :  Aimed at recovering losses suffered because of the infringement (Article 83 of UU MIG).

3. Cancellation Action     : Invalidate the registration of a conflicting trademark (Article 76 of UU MIG).

Trademark application process in Indonesia generally involves several key stages. Once registered, the applicant is considered to have obtained exclusive rights over the trademark, which are protected for 10 years and can be renewed. Overall, the process consists of the following stages:

Recommendations:

1. as a strategy, we should prioritize proactive brand clearance and early registration before entering the market. These measures can reduce the possibility of disputes and strengthens legal standing if conflicts arise. It’s advisable to regularly monitor the DJKI registration database to ensure that no similar trademarks within the same class of goods passed the registration process, as in some cases trademarks for similar products or designs may still be approved.

2. Where infringement is already in play, an immediate cancellation action is often the most efficient starting point. Removing the competing trademark from the registry, it eliminates the legal basis for its continued use. Such action may subsequently be followed up with a claim for damages or injunctions, depending on the extent of the losses and the urgency of the situation.

If you have any questions or would like to discuss further about this topic, please do not hesitate to contact our partner Arselan Ruslan (arselan@ansslaw.com) and or our associate Ezra Oliver (ezra@ansslaw.com), or your usual contact at ANSS Counsellors at Law.

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