Excessive Trade Dress Infringements 

By: Dr. Iman Sjahputra SH, SpN, LL.H

Until today the common societies still confuse on the definition or term in IPR (Intellectual Property Rights). Even, the legal enforcers are still confused with the interpretation about the meaning of IPR. Consequently in the daily life the implementation of IPR matters are often being mixed between trademark, patent, industrial design, copyright, trade secret and integrated circuit design. As the result, many traders, producers and businessman become the victims of the confusing legal enforcement. For example is the word Mark. What is a Mark?

“A mark is the drawing, name, word, letters, numbers and the combination of colors, signs which has distinctive power to be used in the trading of goods or services”.

Legally a mark can be in the form of a drawing, for example, “M + device” from “Mc Donald’s” mark. Is a drawing is a mark or the company’s logo? The common societies who are legally blind might say that such thing is a company‘s logo. Differently, a legal enforcer might say that the drawing of “M + device” from “Mc Donald’s” mark can be regarded either as company’s logo or trademark.

As the consequence from this different opinion will be resulted in the different legal enforcement. For a logo, the law ordinarily applied is the Copyright law that is related to the art works, literatures or sciences on the copyright law. In case a logo being conflicted/questioned, then the question raise is whether or not such logo has the originalities value? It means whether or not such logo has the originality character? And it is not copying from the works of the former artists. If the answer is “yes” then a copyright can be given on such logo based on the Law No. 19 Year 2002 concerning Copyright.

Mark in the trading is a different thing whereas the similarity/equal element is very defining. The Law No 15 Year 2001 concerning Mark is very accommodating on the basic or entire similarity within a mark. When a cigarette bearing “Sampurna” mark is compared with “Sampuri” or “Sampura” for cigarette kind of goods then the existence of sound similarity is very important in determining whether both marks are similar or not.

The similarity of sound, word, drawing, design in a mark sometimes a bit difficult to be interpreted by the businessmen and law enforcers because of its subjective characters. “Tiga Sempurna” mark for a knife kind of goods might be determined as similar with “Sempurna” mark even though both bear different meaning. It is being more complicated for “Polo Twin” mark for bag kind of goods to be considered the same with “Grand Polo” mark by the Trademark Appeal Commission in its Decision No. 98/KBM/HKI dated January 22, 2008 under the reason that the essential element for both marks is its “POLO” word.

On the contrary it is often for the legal enforcers to opine that a drawing, design or packaging on a product which is intentionally made similar with the existing circulated product but made under different mark will be regarded as not the same and have distinctive power. For example is “Rose” mark for biscuit, tart, roll cake where there might be a naughty cakes businessman will copy the design from the owner of “Rose” mark in his packaging but bearing a different mark, for example, “Melati”. Is the naughty owner of “Melati” mark can be regarded as to infringe the trademark right of “Rose” mark? By the plain view, both marks are different whereas the first one is “Rose” mark and the other is “Melati” mark. But, if we compare the packaging design (trade dress) of both marks is the same or similar, so it will confuse the communities in choosing/purchasing both products.

This matter actually up until now is still a problem. Law still has its weakness since Trademark Law never regulates trade dress matters; whole design of a product in which consist of mark, packaging view, design, and drawing or in other word is the out dress of a product. It is clear that the law does not or yet to cover the packaging of a product as a mark, so the businessman who is harmed cannot take any legal action against the naughty businessman who is infringing the packaging even although the marks are not the same.

Beside that, although there is a regulation for illegal action as regulated in the Article 1365 Civil Code, aside from the Criminal Code for the unfair competition, in practice the IPR breaches, such as trademark infringement, in reality still has no legal certainty. Therefore, the Law on Unfair Competition is urgently needed to be validated. So that the naughty businessman who is copying the design of mark of the other person can be caught by law. Hoping that our business world can be more developed, full of creativities and there is legal protection for the trademark holder.

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