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

       A term of trademark is something common for the communities either of them who live in the city or suburb. The term of trademark must give a meaning of particular goods or services they might be using. Meanwhile, for a business man or in the field of trade, the existence of a trademark is very essential. Aside to differentiate the traded goods or services, a trademark is loaded with economic and legal values. The higher the public’s (consumer) trust to a trademark, then the higher the economic value of such trademark will be. A trademark reputation is very much influenced by the level of trust along with the satisfaction level that is gained by public from a particular trademark.

      This is what caused a legal aspect in a trademark. The existence of various aspects in a trademark often invites unfair actions in the proprietary of a trademark. A trademark is quarrel in an unfair manner. A trademark with a good reputation is a valuable asset. That is why trademark as a symbol of the cultural association. If that condition reaches the entire public’s satisfaction, it means that such trademark has good reputation and become a famous trademark that is very close and has a certain touch in the customers’ heart. If you do not believe it, just see how is our or customers’ respond when they want to buy or enjoy a product or service. The consumers will surely looking for a trademark that is attached their heart and mind. A famous trademark will undoubtedly seek by the consumers, because products or services from those trademarks are believed to be satisfying and have high quality. For example, a service mark such as Ritz Carlton, J.W. Marriott, Kempinski must automatically bring consumers’ association to a luxury and five stars hotels. From the quality aspect surely the name (trademark) of those hotels are not doubted. A good service and management will be obtained by the consumer who uses it.

       That is why an understanding of a trademark is not just a symbol and difference. But, trademark is an asset that causes “right” and must be protected. Moreover when trademark is seen as one of the form of Intellectual Property Right (IPR), then the existence of a trademark must be seen since the birth of the “right” under such trademark. The existence of a “right” under a trademark – which in the end is often disputed – is actually a logical consequence from the value of such trademark itself. A birth of a trademark is loaded with another element that accompany them until such trademark become a famous trademark. That is also why if a businessman wants to build a hotel they cannot randomly use a reputable and acknowledged trademark.

      A famous trademark attached to a product or service surely do not achieve in an easy way. A costly promotion is needed. If a service mark of a hotel has been known, then the “chain” will spread everywhere. The logical consequence from the famousness of a trademark surely needs a legal protection. How to get a legal protection for trademark ownership? In Article 1 paragraph 1 of Law No. 15 Year 2001 concerning Trademark (UUM) explains, “Trademark is a mark consists of a picture, name, word, letters, numbers, combination of colors or combinations of the before said elements that has a different element and used in the field of trade of goods and services”. Ownership of a “right” of a trademark is got by an application to Directorate General of IPR, Ministry of Law and HR, Republic of Indonesia as mentioned in Article 3 UUM. Right of a trademark is an exclusive right given by the government to the owner of the trademark who registered in General Trademark List for a particular time by using the trademark themselves or give permission to others to use it.

      Based on this provision, therefore the principle of trademark registration in Indonesia is “the first to file” principle which means that the first party who registered will be deemed as the owner of a trademark. Thus in the example of a luxury hotel trademark above in principle the said trademark shall already registered in Directorate General of IPR to get a legal protection. In Government Regulation Republic of Indonesia No. 24 Year 1993 jo. Nice Classification 8th edition, thus the hotel trademark is classified under the class of goods or services or to be exact in class 43 which consist of services including providing food and beverage and hotel. The existence of this class classification is meant to ease prospective trademark applicants in choosing the goods and services that they want to register.

Can be Cancelled.

      But it must be noted that a trademark registration does not necessarily determined that someone has the “right” over such trademark, but that trademark must be use for their products. Many parties register trademark in bad faith. A trademark is registered without the purpose to be used in the production, but it is to trade (sell) such trademark. As the effect, many entrepreneurs being damaged because they cannot register the trademark they want.

      A trademark whether it is a trade mark or a service mark has a legal protection for 10 years. But it does not shut the possibility that an unused trade mark or service mark in trade might be cancelled by the authorized party. In Article 61 paragraph 1 and 3 UUM allows the Directorate General of IPR in their own discretion to cancel a trademark that is not used for 3 consecutive years. The cancellation of a trademark based on the reason that it is unused in the trade of goods or services since the registration or the last use is the implementation of Paris Convention for the Protection of Industrial Property Rights and the TRIPs Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights where Indonesia has ratified both of those international law instruments with the Presidential Decision No. 24 Year 1979 which was changed with Presidential Decision No. 15 Year 1997 for the ratification of the Paris Convention and Law No. 7 Year 1994 for the ratification of the TRIPs.

      Article 19 of the TRIPs states that, if a registered mark is not used for 3 consecutive years, except there are strong and clear reasons, then the ownership of the mark could be revoked. Surely the revocation needs an accurate survey in the market of trade to prevent damaging the party who registered but using the said trademark in a rural area. We know that Indonesia has a vast region, not just packed in a big city, smaller city also has cheap products to cover the public’s buying capacity. Therefore a revocation of a trademark by the government need to be done carefully so it doesn’t give a loss to the third parties who are actually using that trademark.

      It must be known that a revocation of a trademark case is rarely done at the Directorate General of IPR because they are lacking source whether a good or services have spread in the market. Generally the interested party of a trademark could file a lawsuit to cancel the revocation of a trademark in the Commercial Court in accordance with Article 63 UUM. It must be noted that a registered but unused trademark has a different legal consequences with a used but unregistered trademark.

      In this matter who has more right of that trademark? Is the first applicant or the first user? In the consecutive system that basing the UUM, then the first applicant is the one that is acknowledged. But as stated above by the existence of the ratification of the international Law then indirectly Indonesia also gives a legal protection to the first user with a condition that the trademark user has a good faith as in the declarative system of law. This is a logical consequence if there is a revocation of a registered trademark, but clearly has a bad faith. Isn’t the revocation of a registered trademark meant to protect the first user who is unregistered but truly has a good faith?

Writer is an Advocate and an expert of Intellectual Property Rights practicing in Jakarta.