Co-existence Agreement under Indonesian IP Law

Co-existence agreement is an agreement between two (or more) parties in which they agreed to use similar or identical trademark(s) falls under similar or dissimilar goods and/or services in the course of trade without interfering each other’s businesses or infringing each other’s rights. The parties must clearly determine each undertaking’s specific clauses i.e., trademark or trade names; products; territory of sales; the objective of business on the area they wish to operate; term of agreement; governing law; dispute resolution; amendment clause (if possible) and obligations of each party.

It is uncommon practise but acknowledged under several jurisdiction such as Australia, Canada, European Union, United Kingdom, United States, China, Hong Kong, India, Ireland, Japan, Oman and Philippines. Co-existence is a flexible approach in IP system that allows undertakings to register and use similar marks despite the same business sector, as long as the similarity is not inflicting confusion or misleading the public into being unable to identify respective goods and/or services.

The Law No. 20 of 2016 on Trademark and Geographical Indication (“Trademark Law”) and other IP Laws in Indonesia do not recognise co-existence agreement for use in IP practise. Directorate General of Intellectual Property (“DGIP”) only adapt first to file principle in examining trademark for registration. Thus, a prior registered mark can hinder the application of other similar marks despite a co-existence agreement between both proprietor in the country of origin.

DGIP will issue a notice of provisional refusal on the basis of similarity in principle with any registered mark for similar type of goods and/or services, also for dissimilar type of goods and/or services for registered well-known mark. A well-known mark has broader protection under Trademark Law. As co-existence agreement is not accepted by DGIP if a mark is being refused, the applicant needs to file a response to an office action (provisional refusal).

If a response to an office action is accepted and approved by DGIP, the registration number and trademark certificate will be issued. However, if a response is rejected, DGIP will issue a Notice of Rejection to applicant. Of this, the only remedy would be filing an appeal to Trademark Appeal Commission (Komisi Banding Merek) within 90 days as of the date of Notice of Rejection.

Written by: Threeas Novayanti