“Analisa” Daily, July 9, 2007.

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

Trademark conflicts in the business life are something quite common. Since the Commercial Court was established in 2000, hundreds of trade mark cases have been decided. Most of the trademark cases are trademark cancellation related cases.

The similarities of sound, word, writing or pronunciation are the causes that lead into the trademark conflicts. In the legal term, the mastermind of the conflicts as above is called as “the similarities in its principally or entirety”. “Bonsai”, “Bonzai” or “Bansai” trademarks are regarded the same because of the existence of the sound similarity, therefore the owner of “Bonsai” trademark for the coffee kind of goods has the right to file a trademark cancellation lawsuit against “Bonzai” trademark for the same product used by the third party. This is the law provision as according to the Trademark Law No. 15 Year 2001.

However sometimes a trademark not only consists of a word but the entrepreneurs may use two or three words. The question is whether they are allowed to do it or not? For an example “Naga” trademark is registered at the Trademark Directorate for tea product, and there is another party intends to build a tea manufacturing company and try to file a new trademark of “Naga Berlian”. Would the new trademark owner have the right to use it legally? Trademark Regulation does not govern it clearly. Article 6 of the Trademark Law No. 15 Year 2001 only provides a common definition regarding the similarities in its principally or entirety. So regarding the question whether or not “Naga” trademark is similar with “Naga Berlian” trademark? The answer may be yes, may be no.

The registered trademark owner of “Naga” may have the opinion that “Naga Berlian” trademark emerges illustrated from “Naga” trademark. And as a new comer then “Naga Berlian” trademark is considered as the copy of the other party’s trademark. For this case we could refer to a trademark case that has been decided by the Commercial Court No. 1/Merek/2002/PN.Niaga.Jkt.Pst i.e. ”Super King Cobra” v. “King Cobra” trademark case where the Commercial Court finaly decided that both trademarks are not similar.

Based on the above Commercial Court decision, “Naga” and “Naga Berlian” trademarks could be deemed as not similar trademarks because the writing of both trademarks is different. Based on that opinion therefore the definition of the similarities in its principally or entirety would be more complicated and confusing. The confusion in the interpretation will always be the beginning of a trademark conflict in the Commercial Court. Moreover if the trademark owner claims that his trademark as a famous trademark. The terms and requirements to be considered as a famous trademark are still difficult to be given until today.

Such trademarks as “Nokia”, “Sony”, “Sharp”, “Ericsson”, “Hitachi”, “Burger King”, “Mc Donald”, “KFC” and “Krisppi Cream” could be regarded as famous trademarks since they have become worldwide trademarks. Almost all of us familiar and become the consumers of such trademarks. But how about the trademarks such as “JCO Donuts”, “Es Teller 77” and “Super Mie” that geographically are not global products?

It cannot be argued that geographically in Indonesia the above trademarks are well-known, but have they transformed as famous trademarks? The Trademark Law governs that the basic elements of a famous trademark are “the local communities’ knowledge”, “the continuity and large promotion”, and “the registrations in other countries”. The further question is whether or not the national trademarks such as “JCO Donuts”, “Es Teller 77” and “Super Mie” have fulfilled the criteria required by Trademark Law (the Explanation of Article 6 letter b)? If the answer is not yet, then the status of famous trademarks cannot be carried over by the said trademarks.

A different case shall be applied to the trademarks such as “IBM”, “Apple”, “Toyota”, “Honda”, “Mercedes Benz”, “BMW”, “Luis Vuitton”, “Rolex”, “Bally” and “Gucci” where all of the above trademarks are international trademarks and well-known in nearly all countries worldwide. Therefore it can be understood that famous trademarks can be carried over such trademarks. Since they can be categorized as famous trademarks consequently they have to be protected wherever they exist. Because without the legal protection in the favor of such famous trademarks they will suffer losses either financially and creativity.

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