Question: Against other parties who use the registered Trademark, what legal remedies can be exercised?

DEFINITION

Before answering the question, it is necessary to first explain the meaning of Trademark which is currently regulated in the Law of the Republic of Indonesia Number 20 Year 2016 on Trademarks and Geographical Indications, in article 1 point (1) reads:

‘Trademark is a sign that can be displayed graphically in the form of images, logos, names, words, letters, numbers, colour arrangements, in the form of 2 (two) dimensions and/or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or more of these elements to distinguish goods and/or services produced by persons or legal entities in the trading activities of goods and/or services.’

Trademarks consist of Trademarks and Service Marks as stipulated in Article 2 paragraph (2) with the definition as stipulated in Article 1 paragraph (2) and (3):

‘Trademark is a mark used on goods traded by a person or several persons jointly or a legal entity to distinguish with other similar goods.’

‘Service Marks are marks used on services traded by a person or several persons jointly or legal entities to distinguish with other similar services.’

The core of the exclusive right is ‘registered’ which means in the explanation of the article is after the application goes through the formality examination process, the announcement process and the substantive examination process and gets the approval of the Minister of Law and Human Rights to be issued a certificate.

The registration process must be in accordance with the terms and procedures of the application as stipulated in the law, then conducted an examination of the completeness of the requirements of trademark registration which if the application requirements have been met then given the date of receipt so that the Minister can announce the trademark application into the official trademark news through electronic and non-electronic means within the period specified by law so as to provide an opportunity if there are objections and rebuttals.

Subsequently, a substantive examination of the trademark will be conducted, which if the Examiner decides that the application can be registered, then according to Article 24 of Law No. 20 Year 2016, the Minister:

1. Register the trademark;

2. Notify the registration of the mark to the applicant or his attorney;

3. Issue a trademark certificate; and

4. Announcing the registration of the trademark in the Official Trademark Gazette, both electronic and non-electronic.

LEGAL EFFORTS

Legal Remedies that can be done against other parties who use the trademark that has been registered, namely:

Litigation

1. Civil Remedies by Filing a Lawsuit with the Commercial Court

• In article 83 of Law No. 20 Year 2016, that is:

• The registered trademark owner and/or the registered trademark licensee may file a lawsuit against other parties who unlawfully use the trademark that is substantially or wholly similar for similar goods and/or services in the form of: compensation; and/or cessation of all acts related to the use of the mark.

• The lawsuit as referred to in paragraph (1) may also be filed by the owner of a well-known trademark based on a court decision.

• The lawsuit as referred to in paragraph (1) shall be filed with the Commercial Court.

Meanwhile, the procedure for filing a lawsuit with the Commercial Court is regulated in Article 85 of Law No. 20/2016.

Against the decision of the Commercial Court can only be filed a cassation with the mechanism for filing a cassation regulated in Article 88 of Law No. 20/2016 and against the Commercial Court Decision that has permanent legal force can be filed a legal review (PK).

Criminal Remedies by making a Complaint/Report at the Indonesian National Police or at the Directorate General of Intellectual Property at the Ministry of Law and Human Rights.
Ministry of Law and Human Rights.

Criminal proceedings may be brought against any person who unlawfully uses a registered mark owned by another party for similar goods and/or services that are traded and/or produced either with overall similarity or similarity in essence.

The definition of the same in its entirety (equation in its entirety) according to M. Yahya Harahap: ‘equality in the whole is the equality of all elements’.

Meanwhile, the definition of equality in essence is contained in the explanation of Article 21 Paragraph (1) of Law No. 20 of 2016, namely:

‘What is meant by ‘similarity in essence’ is similarity caused by the existence of dominant elements between one trademark and another trademark so as to create the impression of similarity, both regarding the form, the way of placement, the way of writing or the combination of elements, as well as the similarity of speech sounds, contained in the trademark.’

Article 99 of Law No. 20 Year 2016 regulates the officials who can investigate trademark criminal offences, namely:

‘In addition to the investigating officer of the Indonesian National Police, certain civil servant investigating officers within the ministry that organises government affairs in the field of law are given special authority as investigators as referred to in the Act governing criminal procedure law to investigate criminal acts of trademark.’

Thus, for parties who feel aggrieved because without the right to use a registered trademark, they can make a complaint / report at the Indonesian National Police or at the Directorate General of Intellectual Property at the Ministry of Law and Human Rights.

The punishment for perpetrators who unlawfully use registered trademarks owned by other parties is regulated in Article 100 of Law No. 20 Year 2016, namely:

• Any person who unlawfully uses the same Trademark in its entirety as a registered Trademark owned by another party for similar goods and/or services produced and/or traded, shall be punished with imprisonment of 5 (five) years and/or a maximum fine of Rp. 2,000,000,000.00 (two billion rupiah).

• Any Person who without right uses Trademarks that are substantially similar to registered Trademarks owned by other parties for similar goods and/or services that are produced and/or traded, shall be punished with imprisonment of 4 (four) years and/or a maximum fine of Rp. 2,000,000,000.00 (two billion rupiah).

• Any person who violates the provisions as referred to in paragraph (1) and paragraph (2), which type of goods results in health problems, environmental disturbances, and/or human death, shall be punished with imprisonment for a maximum of 10 (ten) years and/or a maximum fine of Rp. 5,000,000,000.00 (five billion rupiah).

As for those who trade goods and / or services resulting from the criminal offence of trademark then as stipulated in Article 102 of Law No. 20 Year 2016, namely:

‘Any person who trades goods and/or services and/or products that are known or reasonably suspected to be known that the goods and/or services and/or products are the result of criminal offences as referred to in Article 100 and Article 101 shall be punished with imprisonment for a maximum of 1 (one) year or a maximum fine of Rp. 200,000,000.00 (two hundred million rupiah).’

Article 103 of Law No. 20 Year 2016 explains that ‘The criminal offences as referred to in Article 100 up to Article 102 are complaints. A complaint offence is an offence that can only be processed if it is reported by a person who feels aggrieved or has become a victim.’

Non-Litigation

In addition to the settlement of the lawsuit as referred to in Article 83 of Law No. 20 Year 2016, the parties may resolve the dispute through Arbitration or Alternative Dispute Resolution.

Furthermore, arbitration or alternative dispute resolution is regulated in Law Number 30 Year 1999 on Arbitration and Alternative Dispute Resolution (‘Law 30/1999’). This law regulates the settlement of disputes or differences of opinion between parties in a certain legal relationship who have entered into an arbitration agreement which expressly states that all disputes or differences of opinion arising or which may arise from the legal relationship will be resolved by arbitration or through alternative dispute resolution.

In Article 1 point 10 of Law No. 30 Year 1999, Alternative Dispute Resolution is defined as follows:

‘Alternative Dispute Resolution is an institution for resolving disputes or differences of opinion through procedures agreed upon by the parties, namely out-of-court settlement by means of consultation, negotiation, mediation, conciliation, or expert judgment.’

CONCLUSION

From the description above, it can be concluded that the legal remedies that can be done against entities or individuals who without the right to use Trademarks that have been registered, namely:

1. Filing a lawsuit to the Commercial Court;

2. Making Complaints/Reports in the Indonesian National Police or at the Directorate General of Intellectual Property at the Ministry of Law and Human Rights;

3. Arbitration or Alternative Dispute Resolution.

These legal remedies can be an option for trademark rights holders who feel their rights are violated and harmed.

Author: M. Rofiaddin, S.H., C.T.L.