Dewi Savitri Reni, Berkeley
The rational basis for establishing a Trademark Office in a country is to protect trademark owners and the public from third parties who have bad intentions toward the trademarks created by others. However, in the absence of established specific guiding principles on well-known trademarks, this virtuous intention can be misused by third parties who register well-known trademarks.
For example, PRADA was registered with the Indonesian Trademark Office by its non-owner, Fahmi Babra. The office granted Babra's application to register PRADA and issued a certificate confirming the legality of his fake PRADA products sales.
Presently, Babra sells his fake PRADA products in stores located all over Bali, which have hanging on their walls a photocopy of the certificate confirming the ""originality"" and ""legality"" of his products. Isn't it ironic that a seller of fake PRADA bags can sell his fake products with a certificate of authenticity from the government?
The fact is the Indonesian Trademark Office has frequently approved the registration of well-known trademarks by their non-owners. This practice conflicts with Indonesia's obligation to protect well-known trademarks, as a party to various international conventions on Intellectual Property Rights.
Under the law, the Trademark Office is supposed to protect well-known trademarks, but offers no effective administrative procedures or legal basis by which legitimate owners of well-known trademarks can cancel pre-existing registrations. Presently, the only avenue for challenging existing trademark registrations in Indonesia is to bring a court challenge, which is unreliable and time-consuming.
The law regulates that the Trademark Office must refuse the registration of a trademark which constitutes a reproduction of similar goods or services or those liable to create confusion of a trademark considered to be well-known. Furthermore, the Trademark Office, subject to government regulation, can refuse registration of a trademark if it is similar in principal or entirety to a well-known trademark for dissimilar goods or services.
However, the government regulation required by the law has not been issued, which has resulted in a lack of guidance for the Trademark Office on this particular subject. Thus, the application of this concept based on the Trademark Law is impossible and many registrations of well-known trademarks for dissimilar goods or services by non-owners continues.
In Indonesia, when a trademark owner applies for registration, the Trademark Office will examine the application to see if the trademark meets the conditions required. In the preliminary examination, the office will give two months for the applicant to fulfill the requirements. Then, the office will continue to do a substantive examination within nine months as of the fulfillment of all necessary preconditions.
On approval of the application, the trademark is published in the official state gazette to enable any objections, comments or suggestions from third parties. If an objection occurs, the applicant is given an opportunity to address a rebuttal. If the office accepts the rebuttal, it shall issue a Trademark Certificate in 30 days and list the trademark in the National General List of Trademarks. If the Trademark Office overrules the rebuttal, the applicant may appeal to the Appeal Commissioner, who can decide whether the applicant has to submit its case to the Commercial Court or not.
Although the above procedure for trademark registration complies with various international agreements regulating Intellectual Property Rights, the application of the law is still inconsistent. The problems are caused by the lack of human and economic resources.
The staff at the Trademark Office lack sufficient training on issues regarding Intellectual Property Law, in particular Trademark Law. The Indonesian Trademark Office does not have a computerized system that can improve the efficiency of trademark applications and minimize the practice of infringement of well-known trademark rights. The Trademark Office manually deals with more than 100 applications every day.
Due to the lack of resources, the Trademark Office has a huge collection of paper-based registrations and frequently approves the application of well-known trademark submitted by a third party which is not the legitimate owner.
The result is that even after the enactment of the 2001 Trademark Law, the Indonesian Trademark Office still issues many anomalous decisions with regard to the registration of trademarks. To resolve this problem, the government should issue a directive defining ""well-known trademark"" aimed at assisting staff in the Trademark Office in examining mark applications on the basis of similarity with well-known trademarks.
Another solution is to establish an information technology system at the Trademark Office that can help the staff identify a well-known trademark by training them in Internet research skills and creating a database of well-known trademarks. The government should also provide constant education and training on Intellectual Property Law, in particular Trademark Law, to staff of the Trademark Office and judges.
These suggestions will strengthen the application of trademark law in Indonesia, especially to protect the legitimacy of well-known trademarks and help the Trademark Office, as the gateway of trademark protection, to work efficiently and effectively.
The writer is a Fulbright scholar who is currently a graduate student at the University of California, Berkeley's Boalt Hall School of Law. She can be reached at dewisavitrireni@berkeley.edu.
