Insights on Trade Dress and Trademark Similarity
Trade dress protection under Indonesia’s Trademark Law presents unique interpretative challenges within the broader IP enforcement framework. While we’ve experienced some success; such as in a well-known brand’s packaging dispute, other cases have failed despite seemingly similar factual patterns. Our blog will discuss how authorities and the Courts assess trademark and trade dress similarity, and the legal concepts we rely upon.
Trade Dress as Part of Trademark Protection
Indonesia does not recognise “trade dress” as a standalone right. Instead, protection is derived from the Trademark Law, which defines a trademark broadly to include visual elements such as images, colours, colour compositions, and two- or three-dimensional shapes.
In practice, this means that packaging, product appearance, and overall visual presentation may be protected; provided they meet the legal thresholds applied by the Directorate General of Intellectual Property (DJKI) and the Courts.
However, case outcomes have not always been consistent. While certain packaging-based claims have been upheld, others have been rejected at various stages of examination or litigation. This inconsistency raises a good question: what are the legal tests being applied by authorities and the Courts?
Key Legal Concepts in Trade Dress and Similarity Assessments
Several core concepts repeatedly arise in trade dress and trademark disputes.
1. Similarity in Principle (Substantial Similarity)
Article 21 of the Trademark Law prohibit registration of signs that are similar in principle or in their entirety to existing trademarks.
In trade dress matters, similarity in essence does not require identical packaging. Instead, the focus is on whether the similarities are sufficient to create an association in the mind of consumers.
In practice, examiners and judges often assess:
- Overall visual impression
- Shared distinctive elements
- Whether similarities outweigh differences
This assessment is inherently subjective, which partly explains divergent outcomes.
2. Misleading or Confusing Similarity
Beyond similarity alone, Article 21 also targets signs that may mislead or confuse consumers, or create an impression of association.
In packaging disputes, this analysis typically considers:
- Similarity of packaging structure
- Label shape and placement
- Visual layout
- Colour composition
The key question is not whether a careful observer can tell the products apart, but whether ordinary consumers are likely to be confused in real market conditions.
3. Bad Faith in Trademark Filings
Bad faith plays a central role, particularly under Article 21(c).
Indicators commonly considered include:
- Previous business relationship
- Knowledge of an existing or well-known mark
- Intent to ride on another party’s reputation
- Imitation of distinctive packaging or get-up
In trade dress disputes, bad faith is often inferred from systematic imitation, especially where there is no credible explanation for adopting a similar visual identity.
4. Unfair Competition under the Trademark Law
Unfair competition provisions in Indonesia are, in practice, not workable as a standalone cause of action. This is due to two structural issues in the legislation:
1. Criminal Unfair Competition Provision – Requires Proof of Fraud
The criminal provision is very difficult to rely on because it requires proof of fraud, which is seldom available in commercial copying or imitation cases where the conduct is deceptive but not overtly fraudulent. Establishing the necessary evidentiary threshold is typically not feasible in imitation or trade‑dress‑type scenarios where intent is inferred rather than documented.
2. Civil Provision – Requires Proof of an “Unlawful Act” (Generally Interpreted as Breach of Law)
The civil provision (rooted in Article 1365 of the Civil Code) requires showing that the defendant committed an “unlawful act,” which Indonesian courts generally interpret as a breach of a specific law. In practice, this means the civil unfair‑competition theory only works if another independent violation can be proven, such as trademark infringement.
5. Assessment of Damages and Losses
Under Article 83, trademark owners may pursue both damages and injunctive relief, provided they can demonstrate the use of a similar trademark or trade dress and show that such use has caused, or is likely to cause, actual or potential losses.
In practice, quantifying damages remains challenging. Courts tend to focus more on cessation of use than on substantial monetary awards, unless losses can be clearly substantiated.
How Authorities and Courts Apply Tests in Practice
At different stages, decision-makers may emphasise different aspects:
| DJKI (Trademark Examiners) | Often focuses on visual comparison and registrability standards, with limited factual inquiry. |
| Trademark Appeal Commission | May adopt a broader view, but still primarily document – based. |
| Commercial Court and District Court | More willing to consider market context, intent, and consumer perception, particularly in civil and criminal cases. |
Key analytical tools commonly applied include assessing the overall impression of the products, identifying their dominant visual features, evaluating similarities in packaging, and considering the likelihood of consumer confusion.
How each forum applies these tools directly could help our decision between opposition, cancellation, or litigation.
Legal Basis Commonly Relied Upon
Trade dress claims are typically grounded in the following provisions of the Trademark Law:
| Article 1 point 1 | Broad definition of trademarks, including visual and dimensional elements |
| Article 21 | Refusal of trademark based on similarity, confusion, and bad faith |
| Articles 100–102 | Criminal enforcement for unauthorised use of substantially similar marks |
| Article 83 | Civil claims for damages and injunctions, including for well-known marks (even if unregistered, subject to court recognition) |
These provisions form a strong foundation of both preventive and enforcement strategies.
Why This Matters for Brand Owners
For brand owners; particularly those engaging in fast-moving consumer goods, tobacco, food and beverages, and consumer products; packaging is often the primary brand identifier.
Inconsistent application of trade dress principles often leads to enforcement uncertainty, increases litigation risk, and makes outcomes more difficult to predict.
Without a clear understanding of how similarity is assessed at each institutional level, rights holders may overestimate, or underestimate, the strength of their position.
Strategic Takeaways
From a strategic perspective, trade dress enforcement should not rely on theory alone, as legal concepts must be tested against how DJKI and the courts apply them in practice.
Early documentation of market recognition; including evidence of reputation, promotion, and consumer association; is essential, particularly in bad faith claims.
Arguments should focus on dominant features and overall impression rather than minor differences, while enforcement strategies must be aligned with the chosen forum, as approaches effective before DJKI may not suffice in the Commercial Court.
Finally, claimants should maintain realistic expectations on remedies, as injunctive relief is often more attainable than substantial monetary damages.
Closing Note
Trade dress protection in Indonesia is available, although it is not automatic. Success depends on how well legal arguments align with institutional practice and judicial reasoning.
For further discussion on trade dress, trademark similarity, or enforcement strategy in Indonesia, you can contact us via enquiries@skclaw.id or follow us on LinkedIn for updates on IP in Indonesia. Submit a custom inquiry via our Contact Page.
