Monday, May 27, 2013

Confusion over trademark confusion in Indonesia

The Central Jakarta Commercial Court has overturned a Trade Mark Office (TMO) decision to reject an application for FABIANO RICCO. The TMO rejected the application for FABIANO RICCO because it was considered to be similar to a third party prior registration for RICCO.  

So the Malaysian applicant appealed to the Trade Marks Appeal Commission (TMAC) who upheld the TMO.  It was from this that the applicant appealed to the Commercial Court. At the Commercial Court, the applicant was successful in overturning the decision and having its application allowed.  The Commercial Court said that the marks were different, without further reason.

It is well known that TMAC, being made up from examiners, rarely overturns lower TMO decisions. This makes such court decisions important since they should give clear legal reason. However the decision was bare.

In this type of situation there is a trade mark controversy in Indonesia as to whether, when one mark is wholly contained in another mark, there is automatic similarity. It is right that the court didn't say that. But we don't know therefore if the added matter was the main reason for the lack of similarity.  

The lack of proper consideration of the trademark similarity issue is a function of the weak trademark law provision which uses a simple and bare test of similarity, with no mention of confusion. As such a proper consideration of confusing similarity is rarely made in Indonesia.

The TMAC has not decided whether to appeal this decision.

The Trademarks law is under review, and sorely needs to be amended to include a confusion requirement.

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