Latest decision brings hope to unregistered geographical indication owners in Indonesia
Mr. Aubert de Villaine described the wines of Domaine de la Romanée-Conti ( DRC ) as “constantly throbbing.” After patiently savoring Romanée – Conti, one may feel as if they are getting closer to some kind of eternal existence.
De Villaine ‘s description has resonated in two recent trademark opposition cases. In the case in question, the Indonesian Directorate General of Intellectual Property ( DGIP ) rejected a trademark that was similar to the DRC , even though the DRC itself was not registered as a geographical indication ( GI ) in the country. This decision reinforces the previous decision regarding the geographical indication of ” Huile Essentielle de Lavande de Haute-Provence ” (see our published article, https://www.worldtrademarkreview.com/article/lavender-wins -against-unfragrant-infringer ), while raising hope for unregistered geographical indication owners to protect their high-value products and know-how in the Indonesian market.
Trademark Law and Geographical Indications Law
On October 27, 2016, the Indonesian House of Representatives passed the new Trademarks and Geographical Indications Law (Law No. 20 of 2016). Obtaining the registration of a geographical indication in Indonesia (Article 53.1) or through an international agreement (Article 55.1) is a condition for obtaining the protection provided by the new law. Geographical indication owners have expressed concerns about the new law, which appears to weaken their rights against would-be infringers compared with previous laws that did not require any registration. Furthermore, Indonesia has not yet become a member of the Lisbon Treaty.
Case
On August 16, 2021, the French National Institute of Quality and Designation of Origin (Institut National de l’Origine et de la Qualité, INAO), a public agency of the French Ministry of Agriculture, issued an application for “Conti” applied by an Indonesian company for Category 33 wine. Oppositions were filed against the word trademark (Application No. D222021041564) and the graphic trademark (Application No. D222021037781).
Although DRC enjoys protection in France as a Controlled Designation of Origin and in the EU as a Protected Designation of Origin (PDO), it is not registered in Indonesia. Under Indonesia’s previous Trademark Law (No. 15/2001), non-registration was not an issue as the law prohibited the registration of trademarks that were “substantially or identical to an already recognized geographical indication” (Article 6.1). In other words, during this period, whether registered or not, if the geographical indication has been recognized and known, the rights can be maintained.
Ruling
When INAO filed the objection, it claimed the similarity between the DRC and the opposed trademark and the bad faith of the opposed party. DGIP supported INAO and believed that the evidence submitted (including the registration of geographical indications in France and the EU) was sufficient and rejected the opposed trademark on the basis of similarity.
Is Indonesia’s protection of foreign geographical indications adequate?
Law No. 20 of 2016 established a system for the registration of geographical indications, mandating that only geographical indications registered in Indonesia or through international agreements are eligible for the protection provided by the law. These two decisions mean that “international agreements” here include agreements that Indonesia is not a signatory to, such as EU Council Regulation No. 510/2006 dealing with the protection of geographical indications and designations of origin for agricultural products and food products.
Although these two decisions have brought some favorable results, registration of geographical indications in Indonesia still requires caution. Registration of a geographical indication provides the owner with various advantages, such as the ability to prosecute unauthorized users of the geographical indication in court (Article 69(1)). Furthermore, registration serves as prima facie evidence of the authenticity of a geographical indication, placing the burden of proof on the party challenging its legality in legal proceedings.
Rouse represented INAO and DRC in the above objections.
For further information, please contact:
Fabrice Mattei,Rouse
fmattei@rouse.com
