“Analisa” Daily, October 22, 2007.

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

The trademark existence on products and services is very important. A trademark is destined to give a distinctiveness and characteristic on the products and services. As a choice of a trademark the businessmen indeed desire to have a good name, easy to be remembered, easy to be pronounced and nice to be heard. The ease and unique of a trademark is intended to attract the consumers on the products or services offered. Trademarks such as “Gucci”, “Louis Vuitton”, “Cartier” and “Salvatore Ferragamo” are the popular trademarks among the youngster and wealthy ladies. Carrying a “Louis Vuitton”, “Cartier” or “Gucci” handbag while shopping on the mall certainly is a prestige for certain society and the predicate as the wealthy people could be gained by them.

So for businessmen a trademark is an important thing. A trademark can be interpreted in many aspects and it depends on which side it is being viewed. Therefore it is common if a trademark is potentially could create the conflict of law. A trademark can make a person becomes rich and wealthy person but on the opposite it could also downgrade and make a person becomes very poor.

The conflict brought to the Commercial Court is one of the examples where a person files a lawsuit to the other because the person in the opinion that his/her trademark is being infringed by the other party and consequently it damages the products or services offered by the said person. In many cases the reason for the lawsuits are based on the “existence of basic or whole similarity “between one party’s products to others. However in fact it is also difficult for us to determine whether a specific trademark is similar with the other or not.

What is the basic element of a “similarity”? Is it similar between the trademarks “Burger King”, “Burger Kids” or “Burger Queen”? The Explanation of Article 6 Law No. 15 Year 2001 on Mark states that “similarity” is in case of there is a strong element between a mark to another which creates an impression of the similarity in shape/form, placing or sound.

Then the question is whether “Burger King” similar to “Burger Kids” or “Burger Queen”? Let’s simply compare it. If we look at the three trademarks then the strong elements of the trademarks are “King”, “Kids” and “Queen”. Are those trademarks having similarity in shape/sound or the placing or definition? In plain view, it is clearly not. Then is it permissible if there is a party wishes to use the trademarks of “Burger Queen” or “Burger Kids” if the same is not yet registered by the “Burger King” party? Legally the using of “Burger Queen” or “Burger Kids” by any party will not create any problem, will it? Since all the three are containing different definition and there is no similarity at all.

However another argument can be arisen based on the argumentation of “non existence of good faith”. The “Burger King” party with his 11.100 outlets in the United States of America and 66 other countries might oppose in case there is any other party use “Burger Queen” or “Burger Kids” which is correlated with “Burger King” party. Although we know that the word “Burger” is a common word that cannot be owned by any party. However “Burger King” might be in the opinion that the idea in using the name/the name’s founder is in their side. Therefore any word followed “Burger” in any shape/form will not be permitted. We all might be confused with the elements of basic similarity.

All of its evaluation is based on the subjective evaluation. For a trademark being filed its application at the Trademark Directorate then the role of the Trademark Directorate is very eminent in the determining the basic similarity. A trademark consists of some words such as “Café Santai Malam Sepanjang Tahun” could be determined as the same with “Café Santai” since the word element of “Santai” would be regarded as the most eminent element and therefore as the effect the said application can be rejected by the Trademark Directorate.

It is not different with the Trademark Directorate, the Commercial Court and the Supreme Court are also has no uniformity in the judging of basic similarity. For example is the Supreme Court Decision No. 04/K/N/HAKI/2002 on “Berger Seidle” trademark that was decided has no similarity with “Berger” trademark and “Berger Master” logo. But in the case of Supreme Court No. 039/K/HAKI/2003 decided that trademark “Cannonmate” is similar with “Cannon” trademark.

The existence of multi interpretation in deciding basic similarity is not simplifying for the legal practitioners and it will not close the possibility for the trademark examiners or judges who handle the said application/case to take the personal interest. It is often that a trademark that is not similar is rejected with expectation to get the compensation. Such practice is easily happened since there is no law uniformity in deciding the similarity of a trademark.

Therefore the law practitioners expect that a good Supreme Court Decision shall be followed by the other law enforcers in order to erase the confusion in evaluating of basic similarity.

* Writer is an Attorney handling many cases on copyright, trademark and patent infringements and domiciled in Jakarta.