By : Dr. Iman Sjahputra, SH, Sp.N, LL.M

A trademark is invaluable asset for businessman.  More over if the said trademark has become a famous trademark, indeed the businessman’s profits will be multiplied.  That’s why a worldwide wide is circulated globally.  We can see how the well-known and global mark conquered the world’s trade, for example, the worldwide well-known trademarks such as Apple’s “iPad” from USA, “Samsung” from Korea, “Toyota” from Japan, “Haier” from China.  All of these worldwide well-known trademarks have specials value in the consumers’ eye, especially the users.

In buying a product, each consumer will surely pay attention to the trademark attached.  If the consumer knows that the product bear a well-known trademark, then it is not exaggerating if consumer also believes that such product has a good quality.  Therefore a trademark has a strong impact on the product.  For example, “Sanyo” trademark will remind us to the household water-pump product.  But if a “Sanyo” trademark is used for a television, radio or tape recorder product, then the consumers will react and ask whether such product is originally come from “Sanyo” manufacturer who manufactured the water pump?  Such consumers’ reaction is reasonable since in their mind “Sanyo” trademark is identical to the water pump product.

Logically a trademark is created as a “sign” or “distinction” function.  From the legal aspect, the trademark law regulates, that the purpose of a trademark is to differentiate a product one from another and at once to confirm the originality of a product or goods. 

When the consumer chooses a product, then his mind will work toward the known trademarks those are attributed to a product.  Trademarks, such as “Versace”, “Channel”, “Gucci” and “Hermes” for a handbag will automatically refer the common ladies’ memories to the good quality and prestige handbag.   Therefore it is logical if such well known trademarks are frequently being copied or infringed either by the bad faith traders or manufacturers.  For example, in Pasar Tanah Abang and ITC Mangga Dua, Jakarta, there are so many pirated or faked goods being circulated.  Even for a fake product, it is also varied.  The similarity of sound and design can make it hard for the consumers to differentiate a well-known and fake product.  For example an “LV” (“Louis Vuitton”) bag if it is compared “LW” (“Louis Watton”) bag with the same design, creation and material in the same display rack will confuse the consumers since it is not east to distinguish it.

That’s why the Trademark Law forbids anyone to register a mark if it does not bear a distinctive power (Article 5 letter b of the Law No. 15 Year 2001 on Trademark).  However, there is a weakness of the Trademark Law that is not clearly give a specific evaluation about the shape, the way of the placement, the way of the writing or the similarity of sound.  This matter often creates problems in the trademark legal enforcement since there is no clear explicit criteria.  The provision of law that regulates about the “distinctive power” is very general.

However there is a case in Singapore proved contrary whereas the US company “Subway” trademark for sandwich and burger foods when it is opened in Singapore and met with “Subway Niche” outlet for the selling of hawker’s burger and snacks food are regarded as different and not confusing for the target consumers in accordance with the Singaporean High Court Decision.

This case was started in Florida whereas a US company named Doctor’s Associates Inc wished to register its “Subway” trademark for the kind of goods of submarine sandwich in Singapore in 1989 and afterward to open its outlet in 1996.  Apparently there was Lim Eng Wah, a local businessman, who had opened a sandwich Nonya Kue under “Sandwich Niche” trademark in 1987.  Doctor’s Associates Inc company has strongly objected to the use of such trademark and therefore filed a lawsuit based on the reason that both trademarks could be very confusing.  But it turned out that the Singaporean Judges has opined differently, the reason of the similarity between the trademark and used kind of goods is accepted, however if it is seen from the selling display, the prices of the sandwiches offered by both companies are considered can create the distinction and therefore it will not likely to confuse the consumers who are going to buy their products.

Nevertheless the legal enforcements of trademark laws are varied in the countries of the world, like a proverb said “different pool has also different fishes” whereas such proverb is very suitable for the legal enforcement of the said trademark law.  For example the trademark dispute happened in Indonesia whereas apparently “Kok Tung Kopitiam” is considered to be the same with “Kopitiam” trademark by the Board of Judges of the Commercial Court in Medan.  In fact from its wording ‘Kopitiam’ is originally come from Mandarin language of Hokkian version which means ‘coffee shop’ whereas it means that is has already become a public domain.  So, how did the Commercial Law of Medan could decide a “Kopitiam” trademark which is actually a public domain to be registered officially as a trademark?  This would become a question which certainly shall be answered by the experts of Intellectual Property Rights.

* The writer is an Advocate and has handled many of the IPR cases.