By: Iman Sjahputra SH., SpN., LL.M*)

The high rate of trademark cases do not always have to be seen negatively. Because the existence of the cases can be seen as increasing awareness of the public especially that of business entrepreneurs who want to protect their trademarks, provided the settlement of the cases are handled through mechanism of law, either through commercial court or by arbitration and mediation.

Important things to note are, whether or not the cases are handled well. It is hopefully that any settlement of trademark cases shall increase legal awareness of the need for trade mark protection. And the existence of trademark cases should be seen as one of the ways to develop well known trademark derived from local geographical aspects. The existence of trademark cases should push he born of original well known trademark which will speed domestic investment. Thus in the occurence of trademark cases some elements are involved such as court, state in this matter Directorate General of IPR and the holder the trademarks and IPR consultants. The problem is do all those involved in this trademark give their respective contributions for the growth of well known trademark in future ? Is legal certainty reached? This question can be answered if those elements involved are aware of their respective function and social responsibilities. Beside that the existence of good and detailed regulations in the field of trademark can not be neglected. Law No No. 15 of 2001 regarding trademark as a prevailing law in Indonesia is not bad, but in its practice, many cases on trademark which their settlement is based on Trademark Law as the ‘Umbrella” leave with it some uncertainties, due to the existence of loopholes in that law, whereby difference interpretations were/are used which can not give satisfaction in the part of the litigants. If such a condition remain unchanged then the expectation to develop awareness in local trademarks would not be reachable. And even worst is that investment will become stagnant. And it might open the door for bad behavior in the parts of bad faith businessmen which are mushrooming in this country.

Trademark  Imitation

Trademark Piracy and Imitation. Business world has been slowing due to unfair competition cased by growing business bad business behavior by the adventurer entrepreneurs. This situation often causes bad impact on the Indonesia’s business sphere. Seen from global perspective this may cause foreign investors to become “lazy” in doing business here which in turn will cause that the competitiveness at global level will drop  due to lowering trust of the business entrepreneurs in the protection of trademark  in Indonesia. We can image how bad is the business here in Indonesia when faked products and imitating product are wide in circulation, whilst if we learn well the objective is to avoid unfair competition and to improve business world trade. Because the healthier the business world, the better the economic development of the country. Why trademark cases have been increasing. First of all we will need to understand the philosophy underlying the protection of trademark. The legal system of trademark in Indonesia follows the principle of active constitutive as stipulated in Article  3 and 6 of Law  15 of 2001, meaning that the right on trademark is granted after it has been registered. However it does not mean that registration is absolute in nature because if it can be proven that a person has registered his trademark based on bad faith, then, even if he has registered it, its registration can be canceled by other people through commercial court. It is often that the case of trademark ware sparkled by imitation of certain trademark. If the imitated trademark is not of a well known trademark, may be the case is not that bad in its impact. But in most of the cases the imitations were of the well known trademarks. The holders of the well known trademarks will sure object against the imitation because the imitation mislead and deceive the consumers. When is a trademark said as a well known ? This question leaves some prevailing uncertainties.

Famous Mark

Trademark Law provides that famous marks depend very much on the knowledge of the people and the reputation of the trademark due to promotion. The courts trying the case of famous marks are also often hampered in determining as to well known nature of certain famous trademark. More over if the aspect of the famous nature    is seen from how wide its network is or if the mark is famous only locally or only in certain region. Take for example the case of “Warung Pojok” v “Waroeng Podjok” in the case registered under No. 22/Merek/2008/PN.NIAGA. in Commercial Court of Jakarta, that each party claim that his mark is famous. In fact even if the judge trying the case gave judgment in the part of “Warung Pojok”  as the holder of famous mark but the said judge gave no punishment against the holder of trade mark “Waroeng Podjok” which in fact found that it is the first who used the trademark, but it is deemed as  not a famous mark. The reason is the that word “Pojok” (= Corner) is a word that has been used many times by the public and it is not an original idea. It is therefore that the holder of trade mark “Warung Pojok” won in the litigation as the holder of registered trademark, but reconvention claim of the mark holder of “Waroeng Podjok” mark is not accepted by the court. If we study in depth we can find that public may see the judgment in this case is a pseudo judgment which lack protection of mark which follow the principle of law. We do expect that judgment will have impact on certainty. And we all remember that that in the case of trademark cases in general   it is normally based on whether or not there is similarity in principle  either in part or in whole, visually, conceptually or phonetically. Must not the judge based his judgment on the said principles ? In practice this principle has been hold firmly, but how to determine on the well known nature of a trademark ? In general we may hold to the public cognizance of the said trade mark and the promotion efforts done by the holder of the trade mark. But can they become the ruling principle for the trial judge in giving his verdicts ? Detail regulation is still needed so as to guarantee legal certainty. That’s why we are still awaiting for Government Regulation which provides on the well known mark which will be issued immediately. Don’t we all expect the growth of well known marks in this country? Moreover due to global crisis, this can open the eyes of our nation’s children to create well known trademarks. Well known nature of a trademark will of course give positive impact to the trademark holder. Because beside giving benefit through franchising, it will also give financial benefits to he holder and will “make fragrant” to the nation. Look the worldwide trademark such as KFC; Mc Donald’s;  Bally;  Channel; Toyota;  Sony; Ferari;  Mercy , etc  are no longer strange to all of us. When our country will follow and give birth of famous mark ? Who knows?

) the Writer is an Advocate and Expert in IPR  who has handled various famous marks, patent and Copy Right cases, domiciled in Jakarta.