Trademark infringement is often assumed to depend on the similarity between marks. Trademarks that resemble one another visually, in sound, or conceptually are generally considered likely to create confusion in the marketplace. In the Indonesian context, however, that assumption does not always apply. The outcome of a trademark dispute is not determined solely by similarity, but rather by whether the relevant trademark rights have been secured through registration.
This structural tension can be clearly observed in Supreme Court Decision No. 557 K/Pdt.Sus-HKI/2015 concerning the “Pierre Cardin” trademark. Despite the global reputation of the French fashion house, the Indonesian Supreme Court upheld the validity of a locally registered trademark in Indonesia. The Court’s reasoning did not center on the likelihood of consumer confusion, but instead on the formal validity of the registration under Law No. 20 of 2016 concerning Trademarks and Geographical Indications, as amended by Law No. 11 of 2020 on Job Creation and most recently updated through Law No. 6 of 2023 concerning the Stipulation of Government Regulation in Lieu of Law No. 2 of 2022 on Job Creation into Law (“Trademark Law”). In this framework, registration is not viewed merely as an administrative formality, but as the primary source of trademark rights.
The decision reflects the fundamental structure of Indonesian trademark law. Article 3 of the Trademark Law provides that trademark rights are acquired only upon registration, confirming Indonesia’s constitutive first-to-file system. At the same time, Article 21 prohibits the registration of marks that are substantially similar, either in their entirety or in their essential elements, to prior registered marks or well-known marks. These provisions operate within the same legal framework, yet they do not carry equal weight. In practice, the assessment of similarity remains closely tied to registration status and the priority rights established through the first-to-file system.
As a consequence, a structural imbalance emerges. Although the law recognizes the existence of well-known marks under Article 21 paragraph (1) letters (b) and (c), such recognition remains conditional and difficult to establish in practice. Strong evidence is required regarding reputation, market presence, and consumer recognition. Even with such evidence, reputation-based claims do not automatically override registrations that formally satisfy statutory requirements. Legal certainty is therefore preserved, but at the expense of limiting the practical effectiveness of reputation-based protection.
Nevertheless, recent developments in judicial practice indicate that protection for well-known marks in Indonesia has gradually become more progressive compared to the period surrounding the Pierre Cardin decision. In several more recent trademark disputes, courts have shown greater willingness to consider elements such as bad faith, international reputation, and the degree of consumer recognition, even where the relevant mark had not yet been registered in Indonesia. This development suggests that trademark protection is no longer viewed solely through the lens of administrative formalities, but increasingly takes into account commercial realities and the global reputation of a mark.
From a market perspective, this framework shapes business behavior in a relatively predictable manner. The first-to-file system provides certainty by anchoring rights to the official register, while simultaneously narrowing the role of confusion as an independent basis for enforcement. Businesses may encounter clear similarities in the marketplace yet lack the legal standing necessary to challenge them. In such circumstances, the central issue is no longer whether confusion exists, but whether the aggrieved party has secured legitimate rights through registration. This dynamic carries broader implications. Trademark disputes in Indonesia are not solely aimed at protecting consumers from confusion, but also at preserving the integrity of the registration system. As a result, similarity functions as a secondary issue, while registration determines the boundaries within which such assessments may be made.
This legal framework is further supported by implementing regulations that remain in force today, including Government Regulation No. 90 of 2024 concerning Types and Tariffs of Non-Tax State Revenue Applicable to the Ministry of Law and Human Rights, which regulates intellectual property service fees, including trademark registration and maintenance fees. In addition, trademark applications and administration are currently conducted electronically through the Directorate General of Intellectual Property system as part of broader administrative reforms and digitalization initiatives introduced under the Job Creation regulatory regime.
For businesses, the implications are immediate and strategic. Reputation cannot substitute registration. Market presence does not precede legal rights. Delay in filing a trademark application is not merely a strategic oversight, but a structural weakness that may ultimately determine the outcome of future disputes. The system favors parties that secure their position early and leaves only limited room for arguments based solely on similarity.
Ultimately, Indonesian trademark law reflects a policy choice that prioritizes certainty over flexibility. The concept of likelihood of confusion remains relevant, but it does not operate independently. It functions within a framework where registration determines ownership while simultaneously limiting the scope of protection. Within this system, similarity may trigger disputes, but registration ultimately determines who prevails.
