Legal Certainty V. Subjectivity: The Curious Case Of Trademarks Essential Similarity ( IP Update 02-2011 )

As one of the key determining concepts in the trademark protection system in Indonesia, “essential similarity” basically tells how close one’s mark may come in comparison with other’s registered trademark either to avoid infringement allegation or to seek registration of its own rights.

This concept is particularly stipulated under Article 6(1)(a) of the Indonesian Trademark Law No. 15 of 2001, by which registration of one’s mark shall be refused by the Directorate General of the Intellectual Property Rights (DGIP) if it is essentially similar with earlier registered Marks owned by others for goods or services of the same kind. The elucidation thereof further stipulates that similarity in its essential part refers to similarities in respect of dominant features of the Marks in question, e.g. forms, wording/formats, writing style or combination thereof, or also similarity in the pronunciation of the Marks.

The task of determining degree of similarities, i.e. on whether or not such are essentials, is however left to sole judgment of the Trademark Examiners at the DGIP, or judges of the relevant judicial courts in case of litigation. In either case, decisions are unsurprisingly subjective, which are reflected in the following various examples of cases and decisions.

Concerning similarities in word elements, there are cases of marks registration refusals by the DGIP such as SANGOBION ACTIFE by registered mark ACTIVE, as well as BOTTEGA VENETA by registered BOTTEGA. However, evidently the above patterns are contradicted in a number of instances such as co-existing registrations of both marks MASTER GUY and an earlier MASTER, or the co-existing registrations of both marks LOVE ELLE and an earlier LOVE.

Based on similar pronunciation, the mark CLICKZ was refused against prior registration of the mark CLIGHT, while SOAVO was refused against an earlier registration AVO. In this regards, evidence of subjectivity again resurfaced as there are co-existing registration of both marks CELINY and CEILINE, and that of both marks CELINE and JELINE.

Issues of essential similarity are also addressed in the Commercial Court without always following uniform patterns from one case to another. Similarities between the marks DAWN and MORNING DAWN are regarded as essential, as with YAMATA and YAMATO, and ZHANG ZOU PIEN TZE HUANG and PIEN TZE HUANG. On the other hand, similarities between GOLDEN COB and COBB, also between NANO TITANIUM and TITANIUM, are not regarded essential.

Precedents in the Indonesian Supreme Court, however, showed that in determining essential similarity, a mark should not be subject merely to partial observation, but instead must be assessed as a whole. In this regard, the court for instance decided that between MEIJI JOY and MEIJI, BU DEWI and DEWI, as well as between NAGATA DRILL and NAGATA, do not constitute essential similarity.

Such instances of strong subjectivity and somewhat inconsistent approaches upon the issues of essential similarity in the trademark registration and protection system indeed may pose a great risk of legal uncertainty. It is hoped that in the future ameliorations can be worked on the rules and procedures of trademark protection in Indonesia as well as Indonesian legal system in general so as to provide a more certain legal protection for the interests of rights owners and applicants alike.

(amr – sn)