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

     You must often have heard the word trade mark and branded goods. And even for most of people mark is highly related with self esteem and social status. It is quite possible for people like this branded goods can not be separated from his/her daily life.  Why brand /mark is so important in people life?  Simply it can be said that branded goods can not be separated from popularity and quality of the goods. If it concerns with food then it must be related with taste or if it concerns with technology it is sure that the branded goods can not be separated from its sophisticated technology. And it concerns with services then it can be ascertained that that it is related with perfection, convenience and after sales services which satisfy the users. That’s why the more well known a goods the higher its price. Irrespective of daily life actually talking with brand and branded goods, it has legal aspect which stipulate it. Beside it functions as differentiator, actually mark contain economic potentials in the part of the holder of the mark. In essence people is not free to imitate someone’s mark, moreover if the mark has been well known, meaning that any mark in the world shall be protected from imitation and piracy.

Teritorial Principle

     The question legally is how is a mark treated in daily life? Law treat mark based on principle of territoriality (relation with the area where the mark is circulated).  This territorial principle connotes that a mark which is registered in Indonesia will only be protected in the territorial of Indonesia. Except with well known mark, its protection can be treated inter states. Lets see how mark which  is worldwide  such as Nokia for mobile phone and Microsoft for soft computer software, Toyota for Japan cars, Mercedes Benz for German car, J.W. Mariott, Shangrila dan Novotel for hotels and accommodation, Carrefour for supermarket. Of course the above mentioned marks are not strange to us, because they are found almost in any part of the world.  According to law these marks are categorized as famous mark. With this popularity they have legal protection. If we relate with protection based on territorial principle these famous brands are protected in the territory of Indonesia. But they are also protected internationally.  It means that their legal protection covers worldwide. Why so? It is because of international as stipulated in TRIPS (Trade related intellectual property rights) and Paris Convention of Industrial Property 1883, which has been amended in Stockholm on 14 July 1967. These international treaties oblige any of its signatories to contain protection of famous mark in its national law.  But these international treaties do not automatically bind the parties. Some follow up action will have to be taken nationally. Thus if a state has not yet stipulated on famous marks, these international treaties can not be applied effectively.

Weakness

     Due to this legal requirements we still find many states which have not yet protected famous marks in their trades pattern. Many reasons were given by those who do dot not protect the famous marks. Even they quoted national interest as the reason and even territorial protection is often cited as the reason. Like Indonesia, even if the two treaties have been ratified. However, in the implementation of Law No. 15 of 2001 concerning Mark, protection of famous marks is recognized only for goods of similar, meaning that for famous marks such as Mc Donald’s, KFC (Kentucky fried chicken) and Starbuck’s for restaurants and café or goods under class 42. Thus it is open for bad faithed people to register the marks for other kind of goods for example for apparels or goods under class 25 or 18 for bags.  It is this loophole that is utilized by the bad faithed businessmen to steal popularity of famous marks for their own benefits. Because the law in Indonesia still open for such abuse. Moreover because the law on mark in Indonesia still apply constitutive system, meaning that a mark will only be recognized/protected it has been registered. Beside that the use of a service or produced goods will determine very much on its popularity.  Lets say that certain mark has been well known/famous in a state but it does not mean that the mark is recognised as a famous mark in other state. For example mark Indomie which has been famous in Indonesia does not mean that it is also famous in Thailand and Japan. On the other hand Nokia for HP and Hamburger of Mc Donald’s may have been known all over Indonesia. The tow marks can be categorized as famous mark. Because in addition to their actual use in Indonesia, that marks also found in many parts of the globe. The legal case in New York City may be used as guidance. In the case between TC Ltd versus Punchgini, district court judgment which was then supported by second circuit) decided that a famous mark is deemed famous only if there is actual use of that mark.  The case position was as follows : Plaintiff  ITC Ltd which have mark BUKHARA for restaurant, which was used to open  restaurants in 4 four areas beyond USA,  in fact Punchgini as defendant  has used  mark of BUKHARA GRILL for opening restaurants  in  two locations in the USA. Plaintiff objected against the opening of the restaurants because they feel that it is famous mark. So they filed lawsuit, in fact the court give judgment in favour of the defendant on the reason of actual use of the mark by defendant. Thus the element of actual use has become very important and also determine popularity of a mark.

*) The writer is practicing lawyer who handles many cases of mark and intellectual property rights, domiciled in Jakarta).