Wagiman, an expert in philosophy, testifying for the Petitioner at a material judicial review hearing of the Law on Trademarks and Geographical Indications, Wednesday (2/28/2024). Photo by MKRI/Panji.
JAKARTA (MKRI) — Philosophically, the Trademark Law recognizes that a trademark is not only a business identity but also a tool that can improve the competitiveness of micro-, small, and medium enterprises (MSMEs). In addition, its norms were designed to provide legal protection for trademark owners and prevent practices that may harm consumers or business competitors.
The statement was made by Wagiman, an expert in philosophy, who was presented by the Petitioner of case No. 144/PUU-XXI/2023 at a material judicial review of Law No. 20 of 2016 on Trademarks and Geographical Indications (MIG Law/Trademark Law) on Wednesday, February 28, 2024.
At the fourth hearing for both cases No. 144/PUU-XXI/2023 and No. 162/PUU-XX/2023, Wagiman asserted that the provision containing phrase “three consecutive years” in the Trademark Law does not detail the criteria related to the conditions that must be met, such as the use of trademark, maintenance of rights, or execution of certain obligations. Thus, this vagueness leads to varying interpretations and raises challenges in the application of the norm. Philosophically, trademark contains the value of sharing, which is shown in two principles: explicit protection for MSMEs and protection for domestic industries.
The phrase “given to the Third Party to revoke a trademark” while the protection lasts for ten years, Wagiman said, could lead to negative effects due to legal uncertainty and harm to the trademark owner. This is because a third party can file a request to remove a trademark without any clear limitation.
“As such, the policy in the norm could potentially lead to unstable business climate and does not support long-term investments because trademark owners [would] hesitate to develop their trademarks if the risk of removal by a third party is deemed too high,” Wagiman said before Chief Justice Suhartoyo and the other constitutional justices.
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The case No. 144/PUU-XXI/2023 was filed by Ricky Thio, an MSME (UMKM) entrepreneur who owns the trademark “HDCVI & LOGO,” which has been registered with the Ministry of Law and Human Rights. He challenges Article 74 of the Trademark Law on the removal of registered trademarks.
At the preliminary hearing on Wednesday, November 15, 2023, the Petitioner and legal counsel James Erikson Tamba said that the Trademark Law intended to protect MSMEs are supposed to take into account the characteristics of domestic MSMEs. The Petitioner argued that the legal provisions of Article 74 paragraph (1) of the Trademark Law on the removal of trademarks that are not used in trade for three years is highly detrimental to MSMEs that have limited capital and are subject to potential changes at any time. Therefore, if circumstances arise that prevent MSMEs from producing, such as the COVID-19 pandemic or an economic crisis, their trademark rights may be revoked due to the enactment of said article. He asserted that the article is in violation of Article 28D paragraph (1), Article 28H paragraph (4), and Article 33 paragraph (4) of the 1945 Constitution and should be declared not legally binding.
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Meanwhile, case No. 162/PUU-XX/2023 was filed by Djunatan Prambudi, a self-employed resident of Surabaya City. He challenges Article 21 paragraph (1) of the Trademark Law.
At the preliminary hearing on Tuesday, December 19, 2023, the Petitioner revealed that he 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.
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.
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.”
Also read: Govt Testifies on Removal of Registered Trademarks
Author : Sri Pujianti
Editor : Nur R.
PR : Raisa Ayuditha
Translator : 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.
Wednesday, February 28, 2024 | 16:51 WIB 158