A trademark of a product or service is an important thing. Substance of a trademark is not only a distinguishing instrument between one product and the others; but it is undeniable, in the modern era, trademark has impacts in many aspects, legal aspect as well as economic aspect.

From economic aspect, for products like restaurants and cafes, trademark is a prestige. Starbuck’s trademark for coffee shop, for example, has already been famous. Located strategically within relaxing atmosphere, the coffee from the restaurant attracts people to taste and enjoy the sphere. Almost in every malls and department stores there are Starbuck’s stands. Most of people are convinced and trust that the Starbuck’s trademark is a well known brand worldwide.

A well known trademark may attract interested people especially businessmen. That’s why no wonder that many businessmen are trying to run this business by opening/starting it under franchise agreement. A franchise agreement will certainly give advantages for the franchisor and the franchisee as well together with the consumers.

The advantages for the franchisor are the royalties and the capital investments which are relied on the management. While the advantages for the franchisees are the skill managements and the profits from the sales.

The presence of franchise model is also beneficial for the consumers. That means if the consumers wanted to try the worldwide well known trademarks they do not have to go to places where the trademarks are registered.

For example, if the consumer wishes to drink Starbuck’s coffee, they do not have to go to the Seattle, Washington DC, USA simply to taste it.

Thanks are due to the founder of Starbuck for creation of the franchise model. After its trademark become famous and worldwide, Starbuck’s has been giving lots advantages for its shareholders.

LAW PROTECTION

Viewed from legal aspect, the Starbuck’s trademark certainly is protected by the prevailing law in the state where the trademark is registered. For Indonesia, Starbuck’s trademark has been registered in various classes of goods, namely, Class 30 for coffee, Class 18 for wallet and others pursuant to the Government Regulation of The Republic of Indonesia No. 24 Year 1993 dated March 31, 1993 concerning Class of Goods/Services List.

According to this regulation there are 42 classes of goods and/or services that can be registered. But since the implementation of the 8th of Nice Classification, the classifications have been broadened into 45 classes.

It is interesting to ask whether the protection of a well known trademark such as “Starbuck’s”, “McDonald’s”, “Kentucky Fried Chicken (KFC)” will include its products that have not yet been registered.

In other words if “Starbuck’s” have not  registered its goods or services besides the products and services they have use, will the unregistered goods or products be protected?

Can other party register a “Starbuck’s” trademark over goods or services that have no connections with products belong to the Starbuck’s Corporation?

Indonesia has no a strict regulation over this matter yet. In Law on Mark No. 15 Year 2001 Article 6 section (1) letter (b) only provides that “any application shall be rejected by the Directorate General, if the mark is the same  in principal or totally with the mark that have already been popularly belonging to other parties, in case  the goods an/or services  are of the same kind”.

Thus if we observe the said regulation, the law protection over the well known trademark owner covers only for the same kind goods or services. As such whenever there is any third party, other than the Starbuck’s Corporation which, intends to register a “Starbuck’s” trademark for class of goods 3 over soap that will be allowed.

But this opinion has now changed. The law protection over a well known trademark is not just for the same kind registered goods or services but also covers other goods or services.

In this case someone with bad intention shall not be allowed to register in order to double up a well known trademark to cover goods that has not been registered by the owner of the said well known trademark.

Commerce Court of Indonesia has put his head for law protection over the same kind of goods or services of a well known trademark. One of the examples is the Gianni Versace, S.P.A. versus Sutedjo in Commercial Court of Central Jakarta District Court under case No. 1/Merek/2004/PN.Niaga.Jkt.Pst.

The facts of the case is that Sutedjo (the Defendant) has registered a VERSUS trademark for goods under class 24 for textile, class 25 for convection and class 42 for supplying food and beverages.

The Appellant as the owner of VERSUS trademark in class 9, 18 and VERSUS GIANNI VERSACE in class 24 file a petition to request for an annulment by the Commercial Court and the Court accepted the petition.

One of the judge’s considerations is that Indonesia has ratified the TRIPS agreement by Law No. 7 Year 1994 – even though until today there are no regulations as an implementation of the Law on Mark No. 15 Year 2001 of certain requirements for different goods and services that have similarities principally with a well known trademark – so that the Article 16 section (3) in TRIPS agreement which states that “mutatis mutandis” the Article 6 bis Paris Convention will prevail for goods or services that are not being in the same kind.

That is the reason why for businessmen that has bad intentions, the verdict showed a primary warning for the use and register of a well known trademark owned by a third party. It has to be realized that double up of a well known trademark, even though is not being in the same kind,  is not allowed and neither it is protected by the law.