“INTENT TO USE” Obstructs the Good Faith Mark User 

By: Dr. Iman Sjahputra SH, SpN, LL.M *)

Based on the history of mark, it can be said that in the beginning mark was used only as the ownership symbol. But as time goes by, in this modern era the using of mark is being more developed. Mark takes the important role for the business (trading) world. Mark now is not only as a distinctive symbol, but it is also becoming the image of a product and a life style symbol up until as a consumer satisfaction tool.

The more famous a mark is, then the more economic value is. A product bearing a famous mark indeed will be circulated more widely. There will be more consumers use such famous mark because of its guarantee quality and becomes the satisfaction tool for the consumers consuming such products. That is why in this modern era the mark using and ownership is getting more complex in its regulation, moreover in this globalizations era with the free trade system. Now, trademark is not only a state sectoral matter, but it becomes the world matter and it has a specific own law which is called Intellectual Property Rights (IPR) law.

How is about the regulation of mark in Indonesia? Indonesia has acknowledged the using of mark since the Netherlands colonial era by the issuance of Industrial Ownership Law in the “Reglement Industriele Eigendom Kolonien” Stb 1912 – 545 jo. Stb 1913 – 214. It cannot be denied that the Trademark Law of Indonesia as governed in the Law No. 15 Year 2001 concerning Mark is much influenced with many trade interests internationally.

Law of Mark is very influenced with the regulations and developments of international business activities. Many regulations in this world, is much influenced with the global business negotiation process such as General Agreement on Tariffs and Trade (GATT) which is finally ended up with the formation of World Trade Organization (WTO). One of the GATT negotiation results was TRIPs Agreement (Agreement on Trade Related Aspects of Intellectual Property Rights). TRIPs Agreement in the international agreement becomes very important since Trademark Rights was included inside. Paris Convention was also adopted in this TRIPs Agreement.    

It is getting more interesting, with the globalization of the trademark regulation is resulted in the more impacting in the trademark legal system. Two systems currently known by the world in the IPR field is completing one another. Declarative system is mutually completing Constitutive system. Further, constitutive system lately requires the necessity of registration of the mark owned or used now is becoming the option in many regulations of the mark – even though this declarative system does not emphasis on the registration aspect – but almost all the countries in the world now have absorbed constitutive system because it tends to give more legal certainty for the business world.

Is that correct? It cannot be guarantee! Now, it is common for a businessman to use a mark in their business. The purpose of this mark is as a distinguishing factor with the other’s products. For example, “ABC” mark in Indonesia is known by the consumers as soy sauce and battery products. But, this “ABC” mark can also be used by the businessman for different kind of goods, such as shoes.

There might be a motive behind such same mark using. May be the background for such using is because “ABC” mark is a famous mark. Indeed if a businessman uses a mark that is known by the community, even though it bears different kind of product, but the businessman will always get the benefits from the using of the “ABC” famous mark. The using of famous mark for the different kind of goods may be done with the purpose to decrease the promotion budget. It is called “to get a lift” the other’s mark famousness. This type of businessman is categorized as a bad faith businessman.

To own a mark by each businessman can be varied of its purpose. There are also some businessmen who own by registering the same to the trademark office, i.e. the Directorate of Intellectual Property Rights, Department of Law and Human Rights at the very beginning. The purpose is simple which is to save such marks and if they need it in the future then it will be used.

The question is whether such action is permitted by laws?

The pattern done by a businessman who kept such mark, in the legal term is called “Intent to Use” or “Propose to Use”. Such mark is not directly being used, it will be saved, but it is already registered in the Trademark Office. Mark with “Intent to Use” according to the Trademark Law has special consequence whereas if such mark is not used within three consecutive years then the Trademark Office shall be entitled to cancel such mark. This is in accordance to the Article 61 paragraph 2 of the Trademark Law No. 15 Year 2001.

The legal reason for such cancellation indeed is to prevent someone’s bad faith. For example, the background motive for not using such mark is only to prevent the other person with good faith in using such mark which is “parked” as a mark with the “Intent to Use”. But in practice, it is not easy for the Trademark Office to cancel a mark that is not used for 3 consecutive years. It is not as easy as turning over the hand because it is necessary to conduct deep survey to find the evidences.

The same was happened in the U.S.A., before the case of Crocker National Banks v. Canadian Imperial Bank of Commerce, the mark registrant was required to use the mark which had been registered. However, since the decision of Crocker case by the Trademark Trial and Appeal Boards which decided that the foreign mark applicant was able to obtain mark registration in the U.S.A. based on the registration in its original country. This has caused many “Intent to Use” or “Propose to Use” cases in the U.S.A.

*) Writer is an advocate domiciled in Jakarta who handles many Trademark, Patent and Copyright cases.