“Analisa” Daily, November 13, 2006.

An article by Iman Sjahputra, SH, SpN, LL.M. 

Every successful businessman must have their path secrets which are vary from one to another businessman. Generally the excellent marketing patterns and the human resources take important roles in developing a business. However the important role that cannot be sided aside is the “trademark”. The success or fall of the business is much influenced by its trademark which represents the distinctiveness or integrity of a business. Therefore every entity always uses their best efforts to build and maintain their trademark image in order not to be destroyed by a certain party. 

Creating a trademark for a product and service is not an easy thing to do. It is needed a continuous investment in the terms of promotions, advertisements and innovations and it is costly to promote a trademark and turn it into a famous trademark. Trademarks such as Aqua, Indomie, Indomilk, Mustika Ratu, Es Teller 77 and TiKi (Titipan Kilat) can be categorized as “Superbrands” which means that the said trademarks have become well-known trademarks in the eyes of the Indonesian community. To build a trademark such as “Aqua” (beverage), PT. Golden Mississippi, a company led by Tirto Utomo took a long time to do so, starting from 1973 and the company has done many things to protect its “Aqua” trademark.

Imitating a trademark.

The similarity principles either in its principally or entirety  as stipulated in the Article 6 (1) and (2) of Trademark Law No. 15 Year 2001 always be used by companies as a weapon against other parties who try to imitate their trademarks.

The legal term of trademark is a sign in the form of picture, name, word, letters, figures, configuration of colors or combination of the said elements which has distinguishability and is used in trading activities of  goods and services (Article 1 paragraph 1 Law No. 15 Year 2001). A trade mark is not only a resemblance of the distinctiveness of a company, but psychologically it will attract the consumers to purchase the products and services offered. The communities will buy a known product/service and always try to find it every time they need the products/services. Therefore in case a mark/trademark of a company being imitated by other party then a law suit will be drawn up.

But now imitating the other parties’ trademarks are not only conducted by making similar trademarks but the bad faith businessmen have many ways to trick the consumers so they will be defrauded with the same products. One of the ways is by imitating the packing design and making it as similar as possible. For an example is imitation of the packing design of “MERANTI” trademark. “MERANTI” is a well known trademark in the societies, either inside or outside Medan, Sumatera Utara. A home industry company of cakes and breads products is very famous with their “kue bolu” (roll breads) with its special and rare taste and followed with its special packing design widely known by the consumers. But it is really unfortunate that a not responsible competitor company has launched the same product under a different trademark, but with a packing design very similar with the packing design used by “MERANTI” trademark and the products have been circulated in the same location or area. Such unfair competition pattern indeed harms the holder of a famous trademark because besides misleading the consumers, it also could damage and destroy the famous trademark’s image. As the consequences, the owner of a famous mark will suffer the damage financially.

Legally the competitor will be able find an excuse by stating that they bear a trademark to the said “MERANTI” famous trademark. But how about the packing design where the packing products bear the characteristic that is very similar? Can the said act legally categorized as an unfair competition or passing off?

One thing that is certain that Consumers Protection Law Article 8 Paragraph 1 sub (b) and (d) stimulates that  “A businessman is forbidden to offer, promote, advertise a goods or service incorrectly and/or as if the goods or service had gotten sponsorship, approval or certain equipment, working system or accessory. The goods and/or service were made by a company with such sponsorship, approval or affiliation”. Besides that the Article 382 bis of the Indonesian Criminal Law threats any of the unfair competition with imprisonment. In the aspect of private law, Article 1365 of the Indonesian Private Law states that “Any unlawful act which causes damage to the other person, will obliged the person who caused the damage to pay the compensation” could be used as the legal base to sue the said unfair competitor.

Therefore a lawsuit toward an unfair competition is a reasonable step that can be done by the legal holder of a famous trademark. The unfair competitor who tries to get a lift with the “famousness” of a famous trademark by imitating the design product of the packing design or design characteristic in a product is a breach of law, either in Criminal Law, Private Law or Consumer Protection Law.

* Writer is an Intellectual Property expert and the Managing Partner of Iman Sjahputra & Partners in Jakarta.