The Petitioner’s legal counsel Tejo Hariono presenting the petition’s subject matter for the judicial review of the Law on Trademarks and Geographical Indications, Tuesday (12/19/2023). Photo by MKRI/Panji.

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JAKARTA (MKRI) — The preliminary hearing of the judicial review of Law No. 20 of 2016 on Trademarks and Geographical Indications (MIG) was held by the Constitutional Court (MK) on Tuesday, December 19, 2023. The case No. 162/PUU-XX/2023 was filed by Djunatan Prambudi, a self-employed resident of Surabaya City.

The Petitioner has suffered a constitutional loss due to the enforcement of Article 21 paragraph (1) of the Trademark Law, which reads, “The application of trademark shall be rejected if that trademark bears similarities to or is identical with another.” Its elucidation reads, “What is referred to as ‘similarities’ means similarities caused by dominant elements between one brand and another, giving rise to the impression of similarity, in terms of form, placement, writing, or combination of elements and speech sound similarities within the brand.”

He believes the provision has made vulnerable anyone who files a lawsuit for cancellation of trademark if there is a similarity or identicalness with another trademark. Even worse, when one harmed by trademark infringement then files a lawsuit but is subsequently rejected by a judge, this could lead to unfair business competition, which the Petitioner had experienced.

He also requests the Constitutional Court to review Decision No. 50/PUU-XX/2022. “Please review Decision [No. 50/PUU-XX/2022], because (last year) there was an error regarding the issue of legal standing and authority,” said the Petitioner’s legal counsel, Tejo Hariono.

The Petitioner also revealed a concrete case relating to Supreme Court Decisions No. 10/PDT.SUS.MEREK/2020/PN.NIAGA.JKT.OST and No. 39 PK/Pdt.Sus-HKI/2021, which rejected the lawsuits. The disputing parties were PUMA SE as plaintiff and PUMADA as defendant.

The plaintiff was the first worldwide registrant and rightful owner of the PUMA trademark and its variants, which are recognized worldwide. Meanwhile, PUMADA is substantially similar to PUMA and its variants, which the plaintiff owned.

After the judges examined both trademarks, they concluded that both trademarks were easily distinguishable since “DA” in PUMADA is without spaces and there are differences in the writing arrangement. Therefore, these differences resulted in variations in appearance, pronunciation, placement, and sound. Thus, the trademarks cannot be said to have similarities in essence because in determining whether two trademarks have substantial similarity, they should be evaluated as a whole or as a complete unit, and cannot be seen one by one.

Therefore, in his petitum, the Petitioner requests that the Court declare Article 21 paragraph (1) of the Trademark Law unconstitutional and not legally binding, insofar it be interpreted as “The application of trademark shall be rejected if that trademark bears similarities to or is identical with another as a whole and not examined in part nor separately word for word.”

Justices’ Advice

In response to the petition, Constitutional Justices Enny Nurbaningsih (panel chair), Arief Hidayat, and M. Guntur Hamzah provided suggestions for revision. Justice Arief Hidayat highlighted that the petition had many unusual points, one of them being on the Constitutional Court’s procedural law and decision, which is erga omnes.

“The Constitutional Court is a court that conducts judicial review of laws that are considered contrary to the Constitution. Therefore, it does not adjudicate concrete events; it adjudicates norms so its decisions are erga omnes,” Justice Arief explained.

He also highlighted the Petitioner’s power of attorney. “Try to pay attention that usually, a power of attorney gives power to legal counsels, either individually or collectively,” he said.

Furthermore, Justice M. Guntur Hamzah advised the Petitioner to further strengthen the elaboration of the causality between the article being challenged and the Petitioner’s legal standing. “Please elaborate further, so that (the legal standing) is not too general by only explaining that the Petitioner is an Indonesian and self-employed citizen. Is there a connection with Article 21 paragraph 1?” he asked.

Meanwhile, Justice Enny Nurbaningsih highlighted an interesting issue on the phrase “bears similarities to or is identical with another.”

“Indeed, I believe this issue is interesting, there is the phrase ‘bears similarities to or is identical with another.’ As long as the description, arrangement, and drafting are in accordance with the Constitutional Court Regulation No. 2 of 2021 and past petitions on the Constitutional Court’s website,” she said.

Moreover, she highlighted the subject in the petition. “Even the subject and what is being requested are unclear. The explanation of the Court’s authority should not be mixed with [the argument against] ne bis in idem,” she said.

The panel of justices gave the Petitioner until the beginning of 2024 to make revisions. The revised petition must be submitted to the Registrar’s Office no later than January 2, 2024 at 09:00 WIB.

Author       : Fauzan F.
Editor        : Nur R.
PR            : Andhini S. F.
Translator  : Najwa Afifah Lukman/Yuniar Widiastuti (NL)

Disclaimer: The original version of the news is in Indonesian. In case of any differences between the English and the Indonesian versions, the Indonesian version will prevail.

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