LEGAL POSSIBILITY TO REGULATE DEFENSIVE TRADEMARK AS WELL-KNOWN MARK PROTECTION IN INDONESIA (Comparative Studies of Well-Known Mark Protection Based on Indonesian, Japanese, and Australian Trademark Law Perspectives)

Abstract

The level of well-known and famous mark infringement and counterfeiting in Indonesia is high which conducted by the unauthorized parties to run the business by unfair competition in Indonesia that will be affected to likelihood of confusion among society. The protection of well-known/famous mark is regulated in International law and national law. In International law, well-known mark/famous mark is regulated under Paris Convention on Industrial Property and TRIPs Agreement. World Intellectual Property Organization (WIPO) issued WIPO Recommendation on Provision on Protection of well-known Mark. Besides that, States have independency to enact provisions on well-known/famous mark protection by their national law. The problems of this research are focused on (1) regulations comparison toward well-known/famous mark protection according Indonesian trademark law, Australia and Japan; (2) legal possibility to regulate defensive mark as well-known mark protection in Indonesia. This research uses normative legal research by compare trademark law in Indonesia, Australia and Japan. As the result, one kind of protections is by registering mark to the defensive mark registration. Defensive mark is uncommon protection in the world. Japan and Australia completely set out defensive mark provisions as well-known/famous mark protection. Differ with Indonesia does not directly recognized defensive mark. The factor obstruct the defensive mark enactment in Indonesia is local mark’s unpreparedness. In the other hand, defensive mark will increase criminalization and civil lawsuit toward local mark. It makes defensive mark is not possible to be regulated in Indonesia. In addition, awareness to register trademark in Indonesia is still low. It is reflected by trademark registration in Indonesia is lower than Japan and Australia. In addition, there are several articles that indirectly indicate defensive mark provisions in Indonesian trademark law.