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By: Dr. Iman Sjahputra, SH, Sp.N,LL.
We indeed often hear the terms of mark and famous mark. For some people, a trademark is much correlated with the pride and social status. For such person a mark may be cannot be separated with their daily lives.
Why does mark so influencing the human life? In simple way, famous marks are of course cannot be separated from the famousness aspect created by the quality of the goods. For food products then it cannot be separated from its taste, or in case it involves the technology then for sure such famous mark cannot be separated from its sophisticated technologies. If the famous mark involves a service, then for sure, it is related with the perfection of comfortness and after sales services and satisfying the users. That is the reason why the more famous of a trademark is then it is equal with the more expensive market price.
Out of the daily life, actually mark and famous mark matters have its own legal rules. Beside as a distinctive power, in fact a mark has its potential economic value for the owner or trademark holder. Actually a person cannot easily own or copy a mark, moreover if such mark is a well known or famous mark. This means that all the marks in the world shall be protected from the infringement and hijacking aspects.
The legal question is how a mark be treated in the daily life? The law treats a mark in territorial certain way (the connection based on the region of the mark circulation). The territorial principle means that a registered mark in Indonesia is only being protected in the legal territory of Indonesia. Except if the said mark is a famous mark where its legal protection can be given internationally.
Let’s see the marks cross the trading world such as “Nokia” for cellular phones, “Microsoft” for computer software, “Toyota” for Japanese cars, “Mercedes Benz” for German cars, “J.W Marriott”, “Shangrila” and “Novotel” for hotels and accommodations, “Carrefour” for supermarkets. Indeed the above mentioned marks are familiar with us since the said marks can be obtained in nearly every country of world. According to law, these marks can be categorized as famous marks. The famousness of the said marks gives the legal result from its protection aspects.
If we compare it with the territorial based protection, then these famous marks are not only protected in Indonesia, but it is also protected internationally. It means the legal protection is much wider. Why does the protection on the famous marks become wider territorially? That was resulted from the international trademark agreement as divined in TRIPS (Trade Related Intellectual Property Rights) and the Agreement of Paris Convention of Industrial Property 1883 which was amended in Stockholm on July 14, 1967.
These international agreements required every member of the agreements to accommodate the famous mark law protection in the national law of each member. However, these international agreements are not automatically binding. These agreements shall be implemented into the state mark law nationally. Therefore, if a country has not governed the famous mark in its national regulation, then the said international agreements cannot be implemented effectively.
As the result of this legal requirement, there are many countries found not yet protecting their famous marks in their trading pattern. There are many reasons can be used by the countries who do not protect the use of the world famous marks. It is often to use national interest reason, even to use territorial protection principle argument, thus the famous marks protection law can be disregarded.
It is similar to Indonesia, although both of the international agreements had been ratified, but in the implementation of Trademark Law No. 15 Year 2001 only admitted on the protection of the famous mark limited to the same kind of goods/services. It means the worldwide famous marks such as “Mc Donald’s”, “KFC” (Kentucky fried Chicken) and “Starbuck’s” whereas in Indonesia can be categorized as restaurants and café services in class of services 42, but there is a possibility for bad faith parties to register the said trademarks for other kind of goods/services, such as for convection in the class of goods 25 or bags and luggage in the class of goods 18. This legal weakness is commonly used by naughty businessmen to get a lift on the famousness of someone’s mark in selling their products since there is a gap in the Indonesian trademark law system so such action can be applied. More over the Indonesian legal system uses constitutive legal system which means a mark is being protected if the said mark has been duly registered.
Besides that, the using of the produced service or goods plays a high role in determining the famousness of a mark. Let’s say a well known mark in a specific country, does not automatically mean it will be recognized by other countries if the said mark is not used in the country which famousness is being claimed. For an example, ”Indomie” mark which is a famous mark in Indonesia might be not known in Thailand and Japan. But in the other hand “Nokia” mark for cellular phones and “Mc Donald’s” for hamburgers generally are recognized in Indonesia. Both marks can be categorized as famous marks because other than the actual use in Indonesia, both marks also exist world widely.
The decision of the United States Court of New York City may be can be used as a guideline in this matter. In the decision case of ITC Ltd versus Punchgini, the local court which was strengthen by the High Court of the Second Circuit declared that a famous mark is only admitted if there is an actual use. The case was started when the Plaintiff of ITC Ltd who owned trademark “BUKHARA” mark for the restaurant service with the operation of four restaurants located outside the USA. It was found Punchgini, as the Defendant, has used “BUKHARA GRILL” service mark to run the restaurant in two locations in the USA. The Plaintiff raises an objection against the opening of the said restaurants based on the claim that his mark was a famous mark. The Plaintiff filed the lawsuit, but the Court decided on the Defendant’s favor based on the reason of the actual use of the said mark by the Defendant. So the actual use is very important in the using and determining the famousness of a mark.
*) The writer is an advocate who handles the many IPR cases and domiciled in Jakarta.