Indonesia is revising its trademark law, and the current draft will have the country’s trademark office publishing applications before conducting substantive examination. Will this new procedure benefit rights holders, or will it be to their detriment? To answer this question, Managing Intellectual Property interviewed Somboon Earterasarun, director of Tilleke & Gibbins’ Jakarta practice, for his views on Indonesia’s unorthodox approach to trademark examinations.
Somboon claims that efficiency is behind the change, saying, “The trademark office has said that efficiency is one of the reasons for the proposed change. Under the current system, if something comes up during the publication period, the examiner will have to go back and substantively re-exam the mark, so they would have to do it twice. So why not publish the mark first so that the office can just exam it once?” This system, however, may bring with it some significant problems, as Somboon claims this simply shifts the workload to the rights holders, with them having to monitor a much higher volume of applications.
Commenting on the new provisions on assignments to prevent consumer confusion, in that rights owners transferring more than a mark to another party are required to transfer marks that have similarities and cover similar goods and services to that same party, Somboon says that this requirement may be a considerable hurdle for rights holders to deal with, as the issue of whether marks are associated with each other is based on the examiner’s subjective analysis. As an example, he explains that a company selling off a line of its business may find the deal temporarily blocked, perhaps at a great cost, if the trademark office decides that not all of the associated marks are being transferred to the buying company.
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