Chief Justice Suhartoyo chairing a material judicial review hearing of the Law on Trademarks and Geographical Indications, Tuesday (3/19/2024). Photo by MKRI/Panji.
JAKARTA (MKRI) — The Constitutional Court (MK) held another material judicial review hearing of Law No. 20 of 2016 on Trademarks and Geographical Indications (MIG Law/Trademark Law) on Tuesday, March 19, 2024 in the plenary courtroom. The hearing was for cases No. 144/PUU-XXI/2023 and No. 162/PUU-XX/2023. At the session, the justices heard the President/Government’s expert and an expert presented by the Petitioner of case No. 162/PUU-XX/2023.
As an expert presented by the President/Government, Ahmad M. Ramli said in principle, trademark registration has a consequence i.e. exclusive rights to the use of the registered trademark. That is, the trademark can be used exclusively by the owner or it can be licensed to other parties. This trademark registration provides legal certainty and emphasizes the position of the right holder. Therefore, in legal theory, the trademark emphasizes that there should be no attempt by other parties to gain fame by creating a product that resemble the characteristics of another product sold with a registered trademark owned by another, which could cause confusion among consumers.
“Thus, trademark infringement not only concerns similarity [of product], but also similarity in terms of trademark. For this reason, Article 21 paragraph (1) of the Trademark Law was created, to cover all aspects and possible similarities in essence and as a whole. And this is in line with the general principle of intellectual property law that regulates similarity as a whole or in principle,” Ramli explained.
Trademark Similarity
The expert for the Petitioner of case No. 162/PUU-XX/2023 Djunatan Prambudi, Suhardi Somomoeljono, said in exercising their authority, Trademark Law implementers find it difficult to avoid subjective interpretations. Therefore, in its decision, the Supreme Court (MA) emphasized that trademarks have similarities in essence or as a whole if they meet the criteria i.e. similarities in shape, composition, combination, element, sound, speech, and appearance. However, in practice, the decision is not easy to practice until in 2016 the Regulation of the Minister of Law and Human Rights No. 67 of 2016 emphasized that a trademark can be said to have similarities if it meets criteria i.e. nature, purpose and method of use, complementarity, competition, distribution channels, relevant consumers, and origin of goods and/or services.
“These criteria, as an integral part of the implementation of Article 21 paragraph (1) of the Trademark Law, has indicated and showed the flexible interpretation of the article. The Constitutional Court can especially formulate it with a more modern, simple approach that is more easily understood by the public,” Suhardi said.
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The case No. 144/PUU-XXI/2023 was filed by Ricky Thio, a Surabayan 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:
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Author : Sri Pujianti
Editor : Nur R.
PR : Raisa Ayuditha Marsaulina
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.
Tuesday, March 19, 2024 | 17:28 WIB 253