first-to-use jurisdiction in the appropriate section of the Special Topics Chart.) [Indonesia]

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1 [Indonesia] Background for discussion First-to-File and First-to-Use elements in each recognized groups of APAA While each country has developed its own trademark systems based on either first-to-file principle or first-to-use principle, we note that there is a growing tendency in many countries to complement the weakness of one system by borrowing the introducing the elements of the other. We note that this tendency can be witnessed in many recognized groups of the APAA. In Korea, for example, there is a tendency to lean towards the first-touse principle under certain circumstances, for example by confirming intent to use when applying for the trademark. Some countries, although small in number, require the evidence of actual use upon filing of a trademark application, while other countries do not. We believe that most APAA recognized groups increasingly tend to supplement the element of the first-to-use, in addition to the traditional principle of the first-to-file. Thus, we would like to check how the first-to-file doctrine and the first-to-use doctrine supplement each other in various APAA recognized groups. 1. Trademark Act, Basic Principle First of all, we would like to review which of the two doctrines, namely, first-tofile and the first-to-use, your jurisdiction has adopted, and how it is currently evaluated. (1) The-first-to-file and the first-to-use Which of the first-to-file and the first-to-use is adopted by your Trademark Act, in relation to the occurrence of a trademark right? (This is Chart Question No. 1(1). Please mark F if you are a first-to-file jurisdiction and U if you are a first-to-use jurisdiction in the appropriate section of the Special Topics Chart.) (F) The First-to-File doctrine is adopted under the Article 3 of the Indonesian Trademark Law No. 15 of (F) When applications for the registration of trademarks similar or identical to each other compete, which of the first-to-file and the first-to-use is adopted by your Trademark Act? Only the earliest applicant may obtain registration of a trademark under the Article 3 of the Indonesian Trademark Law No. 15 of (2) Actual evaluation on the first-to-register and the first-to-use How does your trademark industry generally evaluate your country s system of the Trademark Act? Is it positive or negative? What is the ground or reason for such evaluation? (This is Chart Question No. 1(2). Please mark Y if positive, and N if negative in the appropriate section of the Special Topics Chart.) In general, it is considered that the first-to-file system of the Indonesian Trademark Law enjoys positive evaluation from our trademark industry because this system allows them to easlily judge the availability for use and registration of a trademark through preliminary searches and they easily predict whether a trademark meets a requirement for obtaining trademark registration If the evaluation on the system of your Trademark Act is negative, what efforts have your country made to remedy such a negative assessment? 1

2 2. Confirm on the Use of a Trademark Regardless of whether your Trademark Act adopts the first-to-file or the first-touse basically, some countries confirm whether an applied-for/registered trademark is used or not. Thus, we would like to discuss how each country confirms whether an applied-for/registered trademark is used. (1) Principle used in confirming the use of a trademark Does your jurisdiction adopt any system of checking the use states of a trademark? If so, what is your checking system from the following examples. (a) Submission of use evidence (b) Checking the intent to use (c) Both (This is Chart Question 2(1). Please mark Y if you have any checking system and N if you do not. For Y jurisdictions, please additionally mark how the checking system operates by additionally indicating (a), (b) or (c) from the above examples. Therefore, the marking for Y jurisdictions should look like Y(a) or Y(c) in the appropriate section of the Special Topics Chart.) Based on what provision, and how, is such principle provided for in the Trademark Act or the Trademark Examination Guideline? (2) Submission of use evidence (for Y(a) country which selected submission of use evidence in Section (1)) In which stage of the following is use evidence requested to be submitted? (i) Filing, (ii) examination, (iii) registration, (iv) upon the lapse of certain period after registration, (v) renewal (This is Chart Question 2(2). Please mark F if use evidence is requested upon filing, E if requested during examination, R if requested upon registration, R+ if requested after lapse of certain period after registration and RR if requested upon renewal.) If use evidences are requested to be submitted in a specific stage, which evidences are submitted in general? How strictly are the evidences examined? Is use evidence required for all of the designated goods? If not, is it sufficient to submit use evidence for one product per class or code of similar goods? What sanctions are imposed on a failure to satisfy a request to submit use evidence? What sanctions are imposed on the submission of false use evidences? (3) Confirmation on intent to use (for Y(b) country which selected confirmation on intent to use in Section (1)) In which stage from application to registration is confirmation on intent to use requested? Is confirmation on intent to use requested in every case or in certain cases? Is use evidence requested to be submitted upon the lapse of certain period after the confirmation on intent to use is made? Or, is it sufficient to submit a declaration of use only? In addition, in case a declaration of use is submitted, is it required to submit supporting documents? Is the declaration of use required for all of the designated goods or is it sufficient to submit the declaration of use for one product per class or group/code of similar goods? (This is Chart Question 2(3). If the declaration is required for all designated goods, please mark Y, if not, please mark N in the appropriate section of the Special Topics Chart.) What sanctions are imposed on a failure to satisfy a request to make confirmation on intent to use? Does it serve as a ground for refusal or invalidation of the trademark? When requested to make confirmation on intent to use, is there any alternative method other than the submission of declaration of use, such as divisional application? 2

3 What sanctions are imposed on the submission of false declaration of use? 3. Protection of Non-Registered Trademarks in use Basically, a country which adopts the first-to-file does not grant protection to non-registered trademarks. However, in certain cases, such trademarks are also granted protection upon introducing the element of the first-to-use. Thus, we would like to discuss the protection of non-registered trademarks. (1) Protection of well-known trademarks If a non-registered trademark is widely used and goodwill is formed thereon, thereby becoming a well-known mark, does your trademark law allow enforcement of the non-registered well-known mark, beyond merely preventing others from registering the same or similar mark? (This is Chart Question 3(1). Please mark Y for yes or N for no.) Are remedies available under the unfair competition laws or other laws, other than the Trademark Act? (2) Protection of unregistered trademark that is known only in foreign countries Under your trademark law, is there any mechanism to protect a trademark that is not registered in your country and known only in foreign countries? (This is Chart Question 3(2). Please mark either Y for yes and N for no.) (3) Acquisition and loss of distinctiveness acquired through use Does your country have a system under which a trademark having no distinctiveness is granted registration, if it acquires distinctiveness(secondary meaning) as a result of being used extensively for a long time? (This is Chart Question 3(3). Please mark either Y for yes or N for no.) On the contrary, if a trademark loses distinctiveness due to extensive use after being registered, how is it handled? (4) Prior Use If your unregistered but prior-used trademark conflicts with another s registered trademark, will your country grant you a legal right to the continued use of your trademark? (This is Chart Question 3(4). Please mark either Y for yes or N for no.) What are the requirements for the acknowledgement of such a prior-use? 4. How Non-Used or Improperly-Used Trademarks are treated If the submission of use evidence is not requested even after a trademark is registered, there is a concern that the management of the trademark may be inadequate due to non-use or improper use. Thus, we would like to review what sanctions are imposed on a trademark not used or improperly used, despite registration, in each country. 3

4 (1) Non-use cancellation action Does your country have provisions against a registered mark not used for a certain period? What is the minimum years of non-use in order to successfully cancel a registered trademark? (This is Chart Question 4(1). Please mark the minimum years in number (e.g., 3 if you require 3 years of non-use and 5 if you require five years of non-use in the appropriate section of the Special Topics Chart.) (3) In a non-use cancellation action, does the trademark owner bear the burden of proving use of the registered mark? (This is Chart Question 4(2). Please mark Y for yes and N for no in the appropriate section of the Special Topics Chart.) For N countries where the petitioner, rather than the trademark owner, bears the burden of proving non-use of the mark, please briefly comment on how such non-use can be effectively proven in your jurisdiction. It is still possible to file a cancellation action on grounds of non-use as stipulated by the Indonesian Trademark Law No. 15 of 2001 Article 63: Any third party shall also be able to file a cancellation action on grounds of non-use as stipulated in Article 61 paragraph (2) letter (a) to the Commercial Court. A registration is vulnerable to cancellation if not used within 3 (three) years from the date of issuance of the certificate of registration or for any consecutive 3 (three) years period as indicated in Article 61 paragraph (2) letter (a) of the Trademark Law No. 15 of However, in practice Trademarks not in use are not cancelled ex-officio but are only attackable by the competitors interested in the mark concerned. Commercial use is not required and token sales are considered as proof of use. The burden of evidence at the outset lies with the Plaintiff but is discharged by a prima facie showing of non-use and it is then on the Defendant (Registrant) to prove that the mark has been used. Since commercial use is not required and token sales supported by pro-forma invoices are considered as proof as of actual use it will not be too difficult for the Registrant/Defendant to escape an attack on grounds of non-use. Prior to proceed with the cancellation action on grounds of non-use, Plaintiff should conduct field investigation as well as market survey conducting by an independent surveyor institution, which have an acknowledgment from the government, and not to mention that you have to obtain a confirmation from related Ministry to which the product is belong to. (if the goods covered related to the medicine then it should get a confirmation from Ministry of Health, etc.) Since the onus and heavy burden of proof for cancellation action on grounds of non-use lies with the Plaintiff then such non-use cancellation actions are rarely filed in Indonesia and even if a non-use cancellation action is filed, it is probably rarely successful. Is the validity of the use evidence of a registered trademark limited to the exact identical form of the registered trademark that was used? (e.g., in case of a trademark consisting of a device and word, or a combination of local and foreign letters, only a part of the trademark is used) (3) Improper-use cancellation action Does your country have provisions that prevent the improper use of a trademark, such as using a changed/modified version of a registered trademark after its registration? (This is Chart Question 4(3). Please mark Y for yes and N for no in the appropriate section of the Special Topics Chart.) If so, what are the requirements for and effects of such request for cancellation? - 4

5 (4) Exercise of a trademark right of non-use trademark Please indicate if your trademark law provides remedy for injunction ( I ), compensation of damages ( D ) or criminal action ( C ), based on a registered trademark that was actually not used. (This is a question under Chart Question 4(4). Please list the abbreviation of all available remedies. For example, if your jurisdiction provides all three remedies for injunction, damages and criminal action, indicate I,D,C. If only damages claim is allowed, indicate D in the appropriate section of the Special Topics Chart.) Is it legal in your jurisdiction for a person to exercise a trademark right that was acquired based on bad faith and, without a genuine intent to use? If not, is it restricted, on the ground that there is a ground for invalidation? No. It is restricted on the grounds that there is a ground for invalidation. What are other disadvantages in exercising a trademark right, based upon a trademark that has not been used? Such trademark registration will be cancelled based on non-use. 5. Others What elements of the first-to-use practice are adopted by your Trademark Act to supplement the first-to-file system? What elements of the first-to-use practice are being discussed to be introduced to your Trademark Act? 5