By: Dr. Iman Sjahputra SH, SpN, LL.H

The unfair competitions between the businessmen related to infringement and copying of Intellectual Property Rights (IPR) are common cases. One real example is the copying of the famous mark packaging. We have been expecting the existence of a regulation for the protection on trade dress to prevent the unfair competition. However, until today it seems there is no seriousness from the government or the People Representatives (DPR) to submit a draft of Trade Dress Law.

The government might think that at this moment there is no urgency to issue Trade Dress law. Instead the regulation on trade Dress, the perfection on some IPR laws are still become a problem, such as the implementation regulation on IPR which is urgently to be made i.e. Famous Mark and the Revision Laws on Mark, Copyright and Patent. This condition has made the regulation on trade dress as the second matter whereas in reality we can find the great number of cases on trade dress infringements. There are many trade dress cases are not settled satisfactory under the reason of the law uncertainty. As the consequences many of the trademark owners are harmed.

A trade dress can be defined as a total image of a product from the manufacturer. In consist of design, color, combination of color, shape, size, graphics, and composition, even it is including a certain selling technique. In daily life, we can see, for example, a packaging of a product. An interesting product indeed is not only created from its mark which is ear-catching, but it is also created from the packaging which is eye-catching.

Cell phone products such as “NOKIA”, “ERICSSON”, and “BLACKBERRY” indeed can be said as famous marks that can be erased from people’s mind globally. If we see the packaging of these cellular phones, we will see the differences in the packaging. Nokia’s packaging is in blue color with its particular design. Ericsson’s packaging is with its special particular light green. So by seeing its packaging and without even having read its brand, the cell phones consumers know what products they are holding.

As a mark “NOKIA” mark is cannot be argued existence because it has been legally protected in many countries. But what is about its packaging? Is it legally protected? It is a certain thing that in Indonesia this matter can be a problem, because of the uncertainty of trade dress regulation. This legal loophole is always used by naughty businessmen to copy the drawing/design of a product in entirety, either its packaging, color, size, shape or name of the product which is very confusing with the original product. It is not a rare thing that this consumers’ cheating tactic is succeeded. The new consumers/buyers will certainly be deceived with its same appearance. However, its taste and quality cannot be cheated because later on the buyer will know the differences between such same products.

One thing needs to be noted that in the case of trade dress infringement, the first easiest comparison is by placing both products side by side. Then we can by clear view whether its “total look” is different or not? It is not necessary to see the brand on both products. The important thing is that the entire product is having no difference and it will confuse the consumers’ mind while choosing both products. Second, is by giving different meaning on the mark it self whereas its packaging can be regarded a mark function.

By looking at its packaging even just once, the consumers will recognize that such product is a product of a certain mark. For example is the packaging of KFC (Kentucky Fried Chicken) with the drawing of an old man wearing a spectacle. At a glance, even without its KFC mark, the buyers will recognize that such thing is the packaging of KFC’s product. So, it is clear that in the case of packaging then the packaging of Kentucky Fried Chicken can be referred into a trademark.

Considering that for the time being there is no regulation on trade dress, some of the trademark owners try to take the legal way by registering their packaging through copyright registration in accordance with the Copyright Law No. 19 Year 2002. As for the creation protection in the form two or three dimensions, it can be done by registering through the Industrial Design Law No. 31 Year 2001. All of these actions are taken for the sake to protect the interests of the good faith trademark owner, isn’t it?   

*) Writer is an advocate domiciled in Jakarta who handles many Trademark, Patent and Copyright cases.