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

For layman, what is meant by  faked goods and faking goods does not always same with faked and faking in legal sense.  As we know, to prevent the booming of faking and circulation of faked products law has provided protection system. The purpose of the protection is to prevent the crime of faking and to protect  the owner of goods and state in the field of tax.

That’s why the giving of certain mark to certain product is not merely as a distinguishing factor. It is more for protection of some parties and public and also to avoid no confuse occur in the part of consumers or public of the goods they purchase.

Unlike with a new product or service where the consumers have not yet known it at all that they always ask as to what the quality of the goods or services. Is the goods durable or its only once used and then thrown away ? And who is the maker ? This kind of question always face the consumers. That’s why the producers always try their best to make their goods eye catching so that consumers chose their goods.

That is not surprising then  that for new goods, producers take any efforts to market it and many ways are taken for that purpose.One way is by making its packaging or design attractive, for example they use colourful design box to attract consumers attention. It may also be in the form of choice of certain name or trademark to ease consumer to remember it. More important also is that the producer keep marketing the product so that consumers may remember  the product.

In so far as they way how the marketing is made is fair,  there should not be any question, but in fact sometimes many unfair ways are done and even it is done cleverly. Deceiving by “imitating” the well known product are often done by the entrepreneur who holds no principle of honesty in doing business. It is not scarce that imitation of trademark and design are found now adays.

Well we also ask then, to what extend the legal protection of law to the people, seen from legal aspect of trademark or example, is a name which “ almost same/identict “can be directly said that imitation has  occurred due to  the existence of similarity ? And to what extend is its similarity?

For example, from aspect of pronounciation it may be that this matter is difficult to differenciate it. For example, “Steinweg”, is it same wit h “Steinway“ when the company and American deem that the trademark of piano “Steinway” is well known trademark, problem will arise when an entrepreneur imports the same goods from Germany with trademark “Grotrian Steinweg”. Why ? because pronounciation of Steinweg  on the Grotrian Steinweg is same with that of Steinway. Sen from trademark law, it may have similarity in the pronounciation, writing and sound. So we also may assume  that consumers may be confused in choosing the two piano brands sold in the market. So is it fair that the circulation of piano ex Germany must be prohibited on the reason that its prono8nciation is same with the Piano of USA  whilst in this matter no intention at all to mitate and the product ex Germany is original.

The question then does this  similarity in the pronounciation cause the consumers confused ? The answer is, it may be yes may be not. It depends on their side of angle.

But for sure  that from legal  aspect, it may have multi interpretations when similarity is only seen from  similarity of the sound and its pronounciation. Trademark law ofcousre stipulates so, whilst the measure of similarity does not seen from the sound, is not it ?

Until today the law on this matter is still not yet fixed. Each legal enforcer, police, judge may come to different interpretation.

Narrow View

You don’t have to be astonish to see that  in practice many disputes on trademarks has been occurring. In such a case we also hope that those legal enforcer should not have narrow view that only see the case from Trademark Law No 15 of 2001 rigidly, especially on the provision of article 6 paragraph 1 regarding the element of similarity.

The legal professional  should have “sense of justice“ to enable them to see more essence  when there is a case of trademark. They must have  strong “sense of justice” in relation to the popularity of a trademark that has been circulated in the market.

When a new  product marketed by an entrepreneur it does not mean that  other people will imitate the product name and design and packaging. It all depend on commercial aspects of the goods in circulation. When the sales of the goods “explode” in the market it might be that other entrepreneur will imitate it.

So beside the elements as stipulated in the law, other actual factors in the market shall also be given attention by the legal professionals. Especially when the legal enforcer face with trademark case.

In a slow economic like present we expect that legal enforcers  will not merely  see from narrow side and depend on “horse spectacle” and then do confiscation and even do the closure of the factory.Because when such an act often done, is not it that economic activity will become slower ? More important is when government faces difficulty in creation employment opportunity, we should not close the living of the employees.

Confiscation and Closure of a factory is not wanted at all because it concerns with the rice of the employees and such a case may cause that entrepreneur would not invest in business.

Moreover when the alleged violation of trademark can not be proven in the court, the business of entrepreneur whose plant is closed and confiscated will  die and he will be scare in investing in this country.

So it is very important  especially for legal enforcer to give attention that   when there is a case on trademark , the existence of similarity does not surely mean that is a faked product. Whether there is Imitation or not  depends very much on  the interpretation and the intention in the part of the entrepreneur.

* ) The writer is a practicing attorney who handles many cases of trademarks, patent, copy right and design.