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

Suppose the English writer, William Shakespeare, now was still alive, he might be had a bad dream by his famous idiom of “what’s a name” and he might be laughed by people. Why? Because now name has many meaning aside from moral and economic aspects. Unfortunately it is often being hijacked by irresponsible people.

A name is a blessing. For example, a name or trademark for a businessman means future money or business. Believe it! Let us see “Mc’ Donald”, “Kentucky Fried Chicken”, “Wendy’s Chicken”, “A & W”, “Coca Cola”, “5 a Sec” laundry, “Tony Roma’s Steak” whereas all of them are the trademarks that have been spreading all over the world. The famousness of these trademarks have made promising and high selling value business networks and filled up the brand owners’ pockets. Therefore it is not a surprise if a brand can become billion dollars value. Just imagine how the heir of Ray Kroc, the potatoes and hamburger cycling of “Mc Donald”, who bankable about US$ 40 billion at the end of the year 2000 from “Mc Donald” brand that has been marketed in all over the world.

Doing “trademark business” may be has become a trend at this moment. Therefore bad faith businessmen are always trying to get the benefits in any possible way. One of those is by registering known overseas trademark in Indonesia. By the registration of such marks, they will be regarded of having an exclusive right to use and to give permission to other people related to such marks in Indonesia (Article 3 of Law No. 15 Year 2001 on Mark). In fact the owners of such marks actually are foreigners. Moreover if the Indonesian applicant is not producing the goods.

So, what is the reason for doing that? The only reason is to sell such marks. It will be better if such “hijacked” trademarks can be sold with a high price, especially if the original owner of such marks feel disturbed, and finally contact the trademark applicant in Indonesia to buy such marks. Will the Indonesian applicant’s effort be success? The answer is may be yes, may be not. If yes, then there will be a trademark assignment transaction between the foreign original owner of such mark and the bad faith trademark applicant in Indonesia under a certain price. On the contrary, if there is no negotiation between both parties, then the case will be brought to the Commercial Court to cancel the trademark which is registered by the Indonesian bad faith applicant.  Many reasons can be used, for example, that such overseas mark is a well-known mark or it has the similarity either basically or entirely as stipulated in the Article 6 paragraph 1 of the Trademark Law.

Mediation.

Lately there are so many trademark conflict cases in the Commercial Court. According to the data at the Central Jakarta Commercial Court, the case is increasing annually whereas in the year 2001 there are 11 trademark cases, in year 2002 there are 59 trademark cases, in year 2003 there are 78 trademark cases, and it is increasing every year. The increasing of the trademark cases from year to year shows the importance of a trademark for businessmen, so that the businessmen need to file a lawsuit to the Court, in this case is Commercial Court, even though it spends a lot of time and money.

Is the Commercial Court the only place for the community (businessmen) to solve the trademark cases? Is there is no other alternative, such as through mediation? We always can file a lawsuit to the Commercial Court to get a decision about a case, but it does not mean that there is no other way can be used to solve the trademark conflict. A lawsuit through the Commercial Court needs many considerations, such as cost and time factors. A fast trial is always expected by the justice seekers, but it has to be remembered that in trademark case there are 2 levels i.e. the Commercial Court and the Supreme Court. Therefore a fair justice sometimes cannot be achieved caused by many judicial or non judicial reasons. The proofing matter is always become an obstacle. With simple and short proofing we will never gain the material truth, but it is only a formal truth. Therefore a decision rendered by the Commercial Court under simple proofing no longer can be corrected by the Supreme Court because the Supreme Court will not examine the evidences, but only examining the legal application of the case.

The Highlight.

There are many sample cases that have happened and solved by the Commercial Court got wide highlight, such as the controversial cases of Davidoff and Megatop cases. In the end, there are many the justice seekers got disappointed. Therefore, is mediation in the trademark conflict can be used as a choice? In mediation, the conflict solution is done through a discussion process between the parties with the help of a mediator. Who can the mediator? Of course as agreed by the parties. However, is the advocate (lawyer) can take the role as the mediator? Why not! So far advocate’s function is only associated as the client’s representative for the case in court. The function of an advocate in fact is more than that.

In the Article 1 paragraph 1 of the Law No. 18 Year 2003 on Advocate is mentioned, “An advocate whose profession is to give legal service, either inside or outside of the court, who meets the conditions as required by the regulation of this law”. Therefore aside from representing the client in the court, an advocate also can act as the mediator as stipulated in the article mentioned above. Because the legal services given by the advocate is not only to represent the client in the court, but the advocate also can help to provide legal consultation and legal action, such as mediation and peacemaker.

As a mediator, an advocate can represent both conflicting parties, in this case for an example is a trademark conflict case. For both conflicting parties, the settlement is not necessary to be win or lost settlement, however, the better solution is a win-win solution so that both conflicting parties are satisfied. Moreover with the existence of the Supreme Court Regulation No. 2 Year 2003 that gives the possibility to conduct mediation process to reduce the piling of cases in the Supreme Court. Therefore the role and function of an advocate in helping to solve the parties’ case is much expected. Why don’t we try?!

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