Protecting Well-Known Marks in Indonesia: Cross-Class Defence Against Squatters

Indonesia’s Trademark Law provides enhanced protection for well-known marks that goes beyond the standard first-to-file framework. Under Article 21(1)(b) and (c) of Law No. 20 of 2016 on Marks and Geographical Indications, the DGIP must refuse applications that are identical or similar to well-known marks — and this protection extends to different and unrelated classes of goods and services. For famous international brands, this is the primary shield against trade mark squatters seeking to exploit the first-to-file system.

The Legal Framework

Article 21(1) provides three tiers of protection against conflicting marks:

• Article 21(1)(a): Refusal of marks identical or similar to registered marks or prior pending applications for the same type of goods/services. This is the standard relative-grounds examination.
• Article 21(1)(b): Refusal of marks identical or similar to well-known marks for similar goods and/or services. This protects well-known marks even if they are not registered in Indonesia.
• Article 21(1)(c): Refusal of marks identical or similar to well-known marks for different goods and/or services that fulfil certain requirements. This is the cross-class protection that gives well-known marks their broadest scope of defence.

The critical feature is that well-known mark protection under Articles 21(1)(b) and (c) does not require the mark to be registered in Indonesia. An unregistered mark that meets the well-known threshold receives protection during examination, opposition, and invalidation proceedings.

What Makes a Mark “Well-Known”?

The criteria for determining well-known status are set out in Article 18 of the Ministry of Law and Human Rights Regulation No. 12 of 2021 (amending Regulation No. 67 of 2016). The factors considered include:

• Level of knowledge or recognition of the mark in the relevant sector of the public.
• Duration, extent, and geographic scope of use of the mark, whether in Indonesia or abroad.
• Duration, extent, and geographic scope of promotion of the mark, including advertising, publicity, and presentation at trade exhibitions, whether in Indonesia or abroad.
• Duration and geographic scope of registrations or applications for registration of the mark worldwide, as evidence of the mark’s global recognition.
• Track record of successful enforcement of the mark, particularly recognition of its well-known status by courts or other authorities in any country.
• The value associated with the mark, as an indicator of its commercial significance and consumer recognition.

These criteria broadly follow the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks and are consistent with international standards under the Paris Convention and TRIPS Agreement.

Cross-Class Protection: Article 21(1)(c)

The most powerful aspect of well-known mark protection is the cross-class shield. Under Article 21(1)(c), a well-known mark is protected even against applications for entirely unrelated goods or services. This means a squatter cannot evade protection by filing the well-known mark name in a class the legitimate owner has never used.

The cross-class protection is subject to “certain requirements” that are assessed based on whether:

• The reputation of the well-known mark is of such a degree that the use of a similar mark for different goods would suggest a connection between those goods and the well-known mark owner.
• The interests of the well-known mark owner would be potentially damaged by the registration of the similar mark for different goods.

In practice, the stronger and more widely known the mark, the broader the cross-class protection it receives. Marks that are household names worldwide enjoy the widest scope of defence.

Asserting Well-Known Status

Well-known mark protection can be asserted in three contexts:

• During DGIP examination: The DGIP may refuse an application ex officio if it identifies a conflict with a well-known mark. However, the DGIP’s awareness of well-known marks is not comprehensive, and brand owners should file oppositions to ensure protection.
• In opposition proceedings: During the two-month publication period, the well-known mark owner can file an opposition citing Articles 21(1)(b) or (c), supported by evidence of well-known status.
• In invalidation proceedings: If a conflicting mark has already been registered, the well-known mark owner can file an invalidation lawsuit at the Commercial Court under Article 76. The standard five-year time limit under Article 77(1) applies, but if bad faith is also alleged, the lawsuit may be filed without time limitation.

Building the Evidence Package

Establishing well-known status requires substantial evidence. The types of evidence typically submitted include:

• Global and Indonesian sales data: Revenue figures, market share, and commercial presence in Indonesia and worldwide.
• Advertising and promotional materials: Evidence of advertising campaigns in Indonesia and internationally, with expenditure figures.
• Registration portfolio: A list of registrations in multiple countries, demonstrating the mark’s global recognition.
• Enforcement history: Court decisions, DGIP actions, and settlement outcomes in Indonesia and other jurisdictions recognising the mark’s well-known status.
• Consumer surveys and market research: Evidence of consumer recognition in Indonesia, conducted by independent research firms.
• Media coverage: Articles, reports, and references to the mark in Indonesian and international media.

The ProLexus/Lexus Case: A Cautionary Tale

A prominent case illustrating the challenges of well-known mark enforcement involved Toyota’s attempt to invalidate the “ProLexus” mark registered in Class 25 (clothing) in Indonesia. The ProLexus mark was registered in 2010 — two years before Toyota registered “Lexus” in Indonesia. The Commercial Court and, on appeal, the Supreme Court ruled in favour of ProLexus, citing the earlier filing date and the absence of proven bad faith. Toyota’s challenge was also found to have exceeded the five-year limitation period.

This case underscores two critical lessons: first, that even globally famous brands can lose disputes in Indonesia’s first-to-file system if they fail to register early; and second, that the five-year time limit for invalidation is strictly enforced unless bad faith is proven.

Strategic Recommendations

• Register proactively in Indonesia: Well-known mark protection is valuable but reactive. Proactive registration across core and adjacent classes remains the most effective defence.
• Build an Indonesia evidence file: Compile and maintain evidence of your mark’s recognition in Indonesia, including sales, advertising, and consumer recognition data.
• File oppositions promptly: Monitor the DGIP Gazette and file oppositions within the two-month window when conflicting applications are detected.
• Combine well-known mark and bad faith arguments: When challenging a squatter, allege both well-known mark similarity and bad faith. The bad faith ground removes the five-year time limit and provides a stronger narrative.
• Do not rely on global fame alone: Indonesian courts and the DGIP require evidence of recognition specifically in Indonesia, not merely global fame.

Common Mistakes

• Assuming global fame automatically translates to well-known status: The DGIP and courts require Indonesia-specific evidence of recognition.
• Filing late and relying on well-known status to recover: The ProLexus case shows that even globally famous brands can lose if they fail to register first.
• Missing the five-year invalidation window: Unless bad faith is proven, the five-year time limit under Article 77(1) is strictly enforced.
• Neglecting cross-class monitoring: Squatters often file in unrelated classes. Monitor broadly, not just in your core classes.

Key Takeaway

Indonesia’s well-known mark protection under Article 21(1)(b) and (c) provides powerful cross-class defence against squatters, including for marks not registered in Indonesia. However, establishing well-known status requires substantial evidence of recognition among Indonesian consumers, and the protection operates most effectively when combined with proactive registration and vigilant monitoring. The ProLexus/Lexus case serves as a stark reminder that even the most famous global brands cannot rely on reputation alone in Indonesia’s first-to-file system — early filing remains the foundation of any effective brand protection strategy.