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Friday, September 2, 2011

Trademark 'misuse' in Indonesia

There are a few countries which maintain strict rules againt the use of trademarks otherwise than in accordance with their registrations. Indonesia is one. For many years this provision in the trademark law has been worrisome for IP holders who don't know how seriously to take it so cannot be sure how much they can vary their trademark use safely.

In August PT Best Mega Industri, a producer of office equipment filed a revocation action against the INDEX mark of Lukmin Eryan. PT Best Mega Industri argue that Eryan's INDEX mark is not used according to its registration. The mark has been used in a way that is confusingly similar to the BINDEX mark which they say also amounts to trademark confusing similarity.

PT Best Mega Industri muddies its case by throwing every known trademark argument into one case - well known mark, bad faith and infringement. But the core issue is to what extent a mark may be used differently from its registration. The same point is also currently being litigated in the Supreme Court in the case of PT Bintang Pesona Jagat v PT Karya Tanjinan Prima, a trademark case concerning the use of the cigarette brand NEOMILD.

The problem is that the Paris Convention covers the point quite well in Art. 5 c 2, which applies to Indonesia as a Paris member and a WTO state:

Use ...in a form differing in elements which do not alter the distinctive character of the mark ...registered ...shall not entail invalidation ... 

So the critical issue is whether the differing elements alter the distinctive character of the mark. Lukmin Eryan has apparently entered his defence in the INDEX case. One way or another either the Supreme Court or the Jakarta Commercial Court will provide some clarity.

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