Indonesia had enacted Trademark Law since 1961 and implemented the first-to-use system. It evolved to adopt the first-to-file system under Trademark Law No. 19 of 1992, which was amended by Trademark Law No. 14 of 1997 when ratifying Paris Convention after accession into the WTO. The Trademark Law was later amended by Trademark Law No. 15 of 2001 and Trademark Law No. 20 of 2016. Those trademark laws reject any bad faith trademark registration and provide protection to well-known trademarks.
However, judicial practice is less than satisfactory. There are 15 well known trademark cases decided by the Supreme Court in the past 3 years, which involved famous trademarks such as Kopi Tiam, Ikea, Yuasa, Pierre Cardin, ST Regis, Lois, Casanova, BMW, Lavera, Toyama, etc. We could easily find inconsistency between these judgements, as some of the real owners of the well-known marks get the protection they deserve, while some others were denied protection by the same panel of judges even though the cases were similar.
Generally, the reasoning of these 15 decisions by the Supreme Court is too short and often lack of convincing common sense when rejecting argumentation by the legitimate and lawful owners of well-known trademarks. The considerations of these 15 decisions often cannot be adopted and used by lower court judges when they issue judgement for later similar cases. As a result, those decisions have caused legal uncertainty in the interpretation and application of the relevant provisions of Trademark Law and cast doubt on the Indonesian legal protection of the worthy owners of well-known trademarks.
In the presentation, the speaker will explain in details why and how some panels of the Indonesian Supreme Court were inconsistent in their judgements by examining the backgrounds of individual cases and judges. In addition, the session will explore the solutions to effectively protect well-known trademarks, as well as the strategy to succeed in handling trademark disputes in Indonesia based on the current legal system, including unfair competition under Article 1365 Civil Code, and the speaker's experiences over the years.
Insan Budi Maulana SH, LLM is an expert in the field of IP, dispute resolution, and corporate matters. He is a lawyer, patent attorney, and also academician in some universities such as Faculty of Law, and Faculty of Economic and Business of Universitas Indonesia; Faculty of Law, Universitas Sebelas Maret, and Faculty of Law, Universitas Trisakti; speaker in various meeting, and writer of some articles and books. Insan Budi also gave public lectures at Faculty of Law Doshisha University, Kyoto in 2013 and in 2014; at the Faculty of Law, Hanyang University, Seoul on December 16, 2013; at Osaka Shoko Kaigisho on 26 Mei 2014; Summer School of Asian Law & Dispute Management at the Faculty of Law, Kobe University, 19 August 2015; at Newcastle Law School, University of Newcastle in 2017; and at Asia IP Dynamics Corporation, Tokyo, on 29 October 2018. Prof. Dr. Insan Budi has been working as a lawyer since 1986, and has been the managing partner of Maulana & Partners Law Firm, assisting international companies from ASEAN, East Asia, EU, Brazilian, and South Africa for IP, corporates, and dispute resolutions matters. He is a member of the AIPPI, APAA, IPBA and IBA. He graduated from the Faculty of Law, Universitas Indonesia in 1986. From September 1988 to March 1992, he received scholarship from Government of Japan as a researcher at Faculty of Law, Kagawa University, Japan. Then he completed the Master Program (LL.M) from the Faculty of Law, Kobe University in 1992, and completed his doctoral program from the same university in 1998. In addition, Insan Budi also received scholarships from the Max Planck Institute, Munich, Germany as guest researcher in the field of IPR and antitrust in 1994, 1996, and 1997.
Kung-Chung LIU holds an LL.B. and LL.M. from National Taiwan University and a Doctorate from the Ludwig Maximilian Universitaet (University of Munich). He was a Research Fellow at Academia Sinica, Taiwan until 2017. In 2003, he was a Visiting Professor at the Faculty of Law of the National University of Singapore and a Visiting Senior Research Fellow for the IP Academy of Singapore. Professor Liu has served as one of the founding Commissioners of the National Communications Commission in Taiwan between 2006 and 2007. In 2014-15, he was a Visiting Professor at the School of Law, Singapore Management University, and the Founding Director of the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA). In addition, he has been co-appointed Professor at the Renmin University, China (2017), and the Graduate Institute of Technology, Innovation & Intellectual Property Management, National Chengchi University, Taiwan (since 2010).
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Last updated on 26 Feb 2019 .