Trademark protection is important part for business continuity of business practitioners. Trademark is the hallmark that distinguishes a business from its competitors. As interpreted under Law Number 20 Year 2016 concerning Trademarks and Geographical Indications (“Trademark and Geographical Indications Law”), trademark is a mark that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color arrangements, in two-dimensional form and/or three dimensions, sound, hologram, or a combination of two or more of these elements to distinguish goods and/or services produced by persons or legal entities in business transaction of goods and/or services.
As a form of protection for trademarks, business entity who trade goods and/or services in Indonesia need to register the trademark, so that business entity obtain exclusive rights from the state to use their trademark. By registering a trademark, the owner of trademark has legal trademark protection from other unauthorized parties who use the trademark. In addition, the owner of the trademark can also allow other parties to use their registered trademark through a trademark licensing agreement.
Trademark protection in Indonesia comply with a system known as “first to file” principle. According to that principle, protection of the right to use the trademark is given to the party who first registered the trademark. Regulated in Article 21 of the Trademark and Geographical Indications Law, an application is rejected if the trademark has the same essence or entirely with a registered trademark belonging to another party, or a trademark that was first applied for by another party, for similar goods/services. Because of this, it is important for business entity to immediately register the trademark, to avoid registering trademark which are essentially similar to theirs. In practice, quite a lot of trademark applications are rejected because have similarities in principle or entirely with other registered trademark.
Registration of trademark can be submitted by the applicant or the consultant (i.e intellectual property consultant). Applications can be submitted both online and offline. For applicants for online trademark registration, applicants need to register an account on the website of the Directorate General of Intellectual Property of the Republic of Indonesia (DGIP). Then submit trademark registration and order a billing code by filling in the type, category, and choice of the trademark class which will be registered. The registration cost for trademark is regulated in Government Regulation Number 28 of 2019 concerning Tariffs and Types of Non-Tax State Revenues that Apply to the Ministry of Law and Human Rights. After pay the bill through the SIMPAKI application, the applicant fills out the registration form and uploads the required supporting documents.
After the application is received, DGIP will conduct a formality check to ensure all supporting documents are complete. The date of receipt is once DGIP states that the application is complete. Furthermore, DGIP will publish the announcement of the application for trademark registration through the Trademark Gazette. During the period of 2 (two) months, other parties have the right to submit objections to the application which has been announced by DGIP. If no objection from any party, the application will proceed to the substantive examination stage for 150 days. The results of substantive examination can be in the form of acceptance or rejection of trademark registration.
In practice, the process of substantive examination may requires longer time than the time period as stipulated in the regulation, which is 150 days, because of many applicants for registration, while the examiner for trademark in DGIP is limited.
If the application is accepted, trademark registration will be announced in the Official Trademark Gazette and the applicant will get a trademark certificate. Based on the provisions of Article 35 of the Trademark and Geographical Indications Law, legal protection for registered trademarks is granted for 10 (ten) years from the date of filing is received by DGIP, and can be extended again for 10 (ten) years by submitting an application for an extension. Therefore, the applicant does not need to worry if the certificate issuance process takes a long time. As long as the registration of trademark has been accepted, the owner of trademark has obtained legal protection for his exclusive right to use the registered trademark.
In addition to the criteria regarding trademarks which cannot be registered and trademarks which must be rejected as referred to in Article 20 and Article 21 of the Trademark and Geographical Indications Law, the decision on whether trademarks can be registered is a subjective discretion for each trademark examiner. Therefore, applications are often rejected due to reasons that cannot be accepted by the applicant. In such cases, the applicant can submit an objection response because the application for registration of trademark is rejected by DGIP. If the objection response is rejected, the applicant can take other legal remedies by submitting an appeal to the Trademark Appeal Commission, and filing a lawsuit to the Commercial Court if the Trademark Appeal Commission rejects the appeal.
Remarkable case of trademark dispute in Indonesia
The rightful owner of trademark whose registration is filed by another party illegally can make a legal remedy during the announcement of the application. As for registered trademark, the rightful owner can file a trademark cancellation lawsuit in the Commercial Court.
There are several cases of trademark disputes in Indonesia that are in the spotlight because they involve world-famous brands, as follows:
- IKEA (Sweden) vs IKEA Surabaya (Intan Khatulistiwa Esa Abadi)
In 2013, PT Ratania Khatulistiwa (IKEA Surabaya) filed a lawsuit for the removal of the trademark against Inter IKEA System B.V (IKEA Sweden), with Case No. 99/PDT.SUS-MEREK/2013/PN.Niaga.Jkt.Pst.
The company (Surabaya) sued IKEA (Sweden) at the Central Jakarta District Court (Commercial Court) for the use of trademark for class 20 and 21 at the Directorate General of Intellectual Property Rights-Ministry of Law and Human Rights of the Republic of Indonesia.
The categories for Class 20 are items of furniture, mirrors, picture frames, objects (not included in other classes) of wood, cork, grass, reed, rattan, horns, ivory, balein , shells, amber, pearl skin, clay, magnesium and their substitutes, or from plastics.
Whereas for class 21 are tools and containers for household or kitchen (not of precious metal or coated with precious metal); combs and sponges, brushes, brush-making materials, objects for cleaning, steel wool, glass that has not been or is half-worked (except glass used in buildings), glasses pottery and crockery not included in other classes.
The main argument by IKEA Surabaya as plaintiff is due to the fact that the trademark of IKEA (Sweden) which has been registered in Indonesia has not been used for 3 years in a row as stipulated in Article 61 paragraph (2) letters a and b of Law Number 15 2001 about Brands.
In the end, in Central Jakarta District Court Decision No. 99/PDT.SUS-MEREK/2013/PN.Niaga.Jkt.Pst and The Supreme Court Decision No. 264 K/Pdt.Sus-HKI/2015, in essence, states the elimination of IKEA (Sweden) trademark registration for goods/services classes 20 and 21 from the general register of Trademark Directorate General of Intellectual Property.
- Pierre Cardin (France) vs Pierre Cardin (Jakarta)
Pierre Cardin (France) sued a businessman from East Jakarta named Alexander Satryo Wibowo who owns a company, PT Gudang Rejeki Utama, for using the Pierre Cardin brand in each of his products, the lawsuit was registered in the Case register No. 15/HKI/Merek/2015/PN JKT.PST.
The result of lawsuit, Central Jakarta District Court rejected all claims filed by Pierre Cardin (France), in other words stating that the Pierre Cardin trademark was legitimate belong to the businessman from East Jakarta.
Although Pierre Cardin (France) filed a Cassation until the Judgment Reconsideration in the Supreme Court, but still rejected. The legal consideration by the Panel of Judges is Pierre Cardin (local) was registered in 1977, and in each product always mentioned the words ‘Product by PT Gudang Rejeki Utama’ so that they become a differentiation with the Pierre Cardin (French).
There are a lot of similar cases in Indonesia which involves famous brand in the world, and unfortunately some international brand cannot win the case because some consideration such as referred to “first to file” principle.
author: husodo & partners
HUSODO & PARTNERS 