Sie sind auf Seite 1von 21

LEGAL ANALYSIS ON PROTECTION TOWARDS UNREGISTERED

WELL-KNOWN TRADEMARK IN INDONESIA CORRELATING


WITH PASSING OFF LAWSUIT

Zaslyn Annisa, Henny Marlyna

Law, Faculty of Law, Universitas Indonesia, Depok, 16424

zaslynannisa@gmail.com

Abstract
This undergraduate thesis discussed about the measure of protection provided for the
unregistered well-known trademark holder by the recent enactment of Indonesia Trademark
Law, in which contained in Article 83 of Law No. 20 Year 2016 concerning Trademark and
Geographical Indication, and whether the provision provided within the law serve similar
measure of protection that catered by passing off lawsuit, using comparison with passing off
in United Kingdom and People’s Republic of China. This legal research is juridical normative
legal research, conducted by qualitative approach and resulted in a form of descriptive
research. The result of this legal research is that by comparing with passing off lawsuit in the
United Kingdom and People’s Republic of China, the enactment of Article 83 does not
accommodate passing off lawsuit within Indonesia trademark protection. Hence, the author
suggests taking into consideration to revised the provision in Indonesia Trademark Law to
provide extended protection towards unregistered well-known trademark.

Keyword:
Unregistered well-known trademark protection, passing off, unfair competition, trademark
law

Abstrak

Skripsi ini membahas tentang perlindungan yang diberikan kepada pemegang merek terkenal
tidak terdaftar dengan berlakunya Pasal 83 dalam Undang-Undang No. 20 Tahun 2016
tentang Merek dan Indikasi Geografis, serta untuk menentukan apakah ketentuan yang diatur
dalam Undang-Undang Merek Indonesia tersebut mengakomodir perlindungan melalui
gugatan passing off dengan membandingkan pada ketentuan gugatan passing off di Inggris
dan Republik Rakyat Cina. Penelitian hukum ini ialah penelitian normatif yuridis, dilakukan
dengan pendekatan kualitatif dan menghasilkan suatu bentuk penelitian deskriptif. Hasil
penelitian hukum dengan membandingkan ketentuan gugatan passing off di Inggris dan
Republik Rakyat Cina ialah berlakunya Pasal 83 Undang-Undang No. 20 Tahun 2016 tentang
Merek dan Indikasi Geografis tidak mengakomodir gugatan passing off dalam perlindungan
merek di Indonesia. Sehingga, penulis menyarankan untuk mempertimbangkan perubahan
pada ketentuan Undang-Undang Merek Indonesia agar dapat memberikan perlindungan
terhadap merek terkenal tidak terdaftar.

Kata kunci:
Perlindungan merek terkenal tidak terdaftar, passing off, perbuatan curang, hukum merek

Introduction
There are two types of trademark priority systems in the world: first-to-use and first-to-
register, also called first-to-file.1 As the name suggests, the first person to use a mark in first-
to-use jurisdictions has priority of the mark, while the first person to register his or her mark
with an official registrar enjoys trademark rights in first-to-register jurisdictions. Trademark
rights acquired within each jurisdiction are subject to the principle of territoriality, which
“permits ownership of a mark by separate parties in separate nations, regardless of consumer
perception.” 2 Since the enactment of Law No. 19 Year 1992 concerning Trademark,
Indonesia has implemented the constitutive system (first-to-file), which required registration
upon obtaining trademark rights. The enactment of Law No. 19 Year 1992 shifted the
trademark system, from the previous Law No. 21 Year 1961 concerning Company Mark and
Trade Mark that implemented declarative system (first-to-use), in which does not required
registration upon trademark rights.3 The constitutive system is also implemented under Law
No. 20 Year 2016, as such emphasized namely within Article 3 that stipulated, “Right of
Mark is obtained subsequent to the registration of Mark hereto”.
A trademark that has been frequently used in trading activities that further lead to have
gained reputation from the consumer, in which creates the goods under the trademark
instantly creates a touch of familiarity and mythical context to all consumer is a situation
when a trademark considered as ‘well-known’ trademark. 4 In regards to well-known
trademark protection, Article 6bis of the Paris Convention obliges member states to refuse or
cancel registration, or to prohibit use of a trademark in identical or similar goods, which could
create confusion as to another trademark that has been recognized as well known by

1
J. Thomas McCarthy, Trademarks And Unfair Competition, (1984), Deerfield Ill.: Clark Boardman
Callaghan
2
Graeme B. Dinwoodie, “Trademarks and Territory: Detaching Trademark Law from the Nation
State”,(2004), Houston Law Review, Vol. 41, No. 3, p. 886. Available at SSRN:
https://ssrn.com/abstract=616661
3
See General Explanation of Law Number 19 of 1992 concerning Trademark, in point b explains that the
change from the Declarative System to Constitutive system is due to the reason that Constitutive System provide
more legal certainty than Declarative System.
4
Budi Agus Riswandi dan M. Syamsudin, 2005, Hak Kekayaan Intelektual dan Budaya Hukum, (Jakarta:
PT. Raja Grafindo Persada), p. 87.
competent authorities.5 Hence, when a trademark is recognized as a well-known mark in a
given jurisdiction, the rights holder of the mark can prevent others from using or registering
the mark prior to registration. 6 By gaining the recognition, well-known trademark is more
prone to be used as leverage to the business competitor or bad faith third party to hitch over
the fame of well-known trademarks.
However, that is not always the case that a well-known trademark will always be
registered. There is certain situation where well-known trademark is not registered, namely
due to the reason that the indication contain within the trademark is not recognized under
Indonesia Trademark Law. Whereas Article 1 paragraph (1) of Indonesia Trademark Law
only provides picture, logo, name, word, number, composition of colors, in the form of 2 (two)
dimensional, and/or 3 (three) dimensional, voice, hologram, or combinations of 2 (two) or
more said elements that will regarded as trademark, hence other non-conventional mark such
as taste, scent, or trade dress will not regarded and thus cannot be protected under Indonesia
Trademark system even though such trademark is considered as well-known trademark.
In a country that adopted common law systems, there is passing off lawsuit that could
be conducted for unregistered well-known trademark. Hence, those who feel disadvantaged
may hold an action commonly known as the action for passing off. Through a lawsuit against
passing off, the aggrieved party may sue the person who "hitch" over the fame of the name,
brand, other person who has been created and painstakingly created and expended a great deal
of manpower and financing for the promotion of the name or brand resulted to obtain a high
quality that widely known in the community. The enactment of Law No. 20 Year 2016
concerning Trademark and Geographical Indication (Hereinafter regarded as ‘Indonesia
Trademark Law) that enables unregistered well-known trademark owner to pursue civil
litigation is regulated under Article 83 Paragraph (2) that stated:
(1) Pemilik Merek terdaftar dan/atau penerima Lisensi Merek terdaftar dapat
mengajukan gugatan terhadap pihak lain yang secara tanpa hak menggunakan Merek
yang mempunyai persamaan pada pokoknya atau keseluruhannya untuk barang
dan/atau jasa yang sejenis berupa:
a. gugatan ganti dan/atau
b. penghentian semua perbuatan yang berkaitan dengan penggunaan Merek tersebut.
(2) Gugatan sebagaimana dimaksud pada ayat (1) dapat pula diajukan oleh pemilik
Merek terkenal berdasarkan putusan pengadilan.
(3) Gugatan sebagaimana dimaksud pada ayat (1) diajukan kepada Pengadilan Niaga.7

5
Paris Convention for the Protection of Industrial Property, Article 6bis.
6
Ai-Tang Irene Chang, "Whether a Trademark Qualifies As a Well-Known Mark?-Application Of Bad
Faith in Determining The Degree Of Well-Knowness"(2012), Vol. 1 NTUT J. of Intell. Prop. L. & Mgmt..
7
Indonesia. Undang Undang Merek (Trademark). Law No. 20 Year 2016, State Gazette No. 252 Year
2016, Supplemental State Gazette No. 5953. Article 83 “(1) Owner of a Registered mark and/or the Licensee of
Furthermore, the elaboration of the passage embedded under Article 83 Paragraph 2 of
Law No. 20 Year 2016 in regards to lawsuit for Well-known trademark is explained under the
elucidation as follows:
Pemberian hak untuk mengajukan gugatan perdata berdasarkan perbuatan curang
yang dilakukan oleh pihak lain dimaksudkan untuk memberikan pelindungan hukum
kepada pemilik Merek terkenal meskipun belum terdaftar.8

As it is stipulated, the aforementioned provision enables unregistered well-known


trademark owner to pursue civil litigation, thus, this research will emphasized on whether
Article 83 (2) of Indonesia trademark law share the same ideas with passing off lawsuit in
common law countries to provide protection towards unregistered well-known trademark, and
whether this article serves as exception towards Indonesia first-to-file principles on trademark
protection. Furthermore, as the article provided unfair competition as ground for filing the
civil litigation, hence, this research will find out the correlation of unfair competition and
trademark related protection within Indonesia trademark law.

Research Method
The research method that will be used in conducting the research for this paper is using
juridical normative legal research. Juridical normative legal research is a research conducted
upon written positive law as well as unwritten positive law.9 Hence, in regards to the issue
and notion within this research, the author will use Law No. 20 Year 2016 concerning
Trademark and Geographical Indication and other supporting regulation as the basis for
analyzing the notion. The type of this research is descriptive research. Descriptive research is
intended to provide as much data as possible about humans, circumstances, or other
phenomenon.10

registered Mark may file a law suit to the counter party who unrightfully utilizing a Mark which has similarity in
its essential or its entirety for goods and/or service of the same kind, in a form of: a. Damages law suit, and/or b.
Termination of all acts that related to the utilization of Mark hereto. (2) Lawsuit as stipulated by paragraph (1)
shall be filed by an owner of a famous Mark based on a court decision. (3) Lawsuit as stipulated by paragraph
(1) shall be filed to The Commercial Court.” (Unofficial Translation by Author)
8
Indonesia. Undang Undang Merek (Trademark). Law No. 20 Year 2016, State Gazette No. 252 Year
2016, Supplemental State Gazette No. 5953. Elucidation of Article 83 Paragraph (2) “The granting of the right to
file a civil lawsuit based on a unfair competition committed by another party is intended to provide legal
protection to the owner of a well-known trademark even though it has not been registered.” (Unofficial
Translation by Author)
9
Sri Mamudji et al., Metode Penelitian dan Penulisan Hukum, (Depok: Badan Penerbit Fakultas Hukum
Universitas Indonesia), 10.
10
Soerjono Soekanto, Pengantar Penelitian Hukum, cet. ke-3, (Jakarta: UI-Press, 2007),10.
In normative legal research, literature that classified as the secondary data is the main
data in this research.11 Such legal research conducted by document study method, by means of
collecting data which conducted through written data by using content analysis. 12 Tracing
various legal literatures does collecting the data using document study in writing this research.
The legal literature sources categorized based on its binding power are primary sources,
secondary sources, and tertiary sources.13 In analyzing the data and result of research within
this research paper qualitative data analysis shall be used, as the data will be analyzed using
author’s own interpretation.

Discussion
1. Unfair Competition within Trademark Protection
Unfair competition in regards to trademark related protection is mentioned within
International covenant and guidelines, namely it is firstly introduced within the Paris
Convention. According to Article l0bis paragraph (2) of the Paris Convention, unfair
competition defined as "any act of competition contrary to honest trade practices in industrial
or commercial matters”. 14 To prevent unfair practices Article 10bis paragraph (3) of Paris
Convention contains a non-exhaustive list of three types of acts of unfair competition, namely,
acts likely: Causing Confusion, False allegation and Misleading.
In Indonesia unfair competition is also regulated under Law No. 5 Year 1999
concerning the Prohibition of Monopolistic Practices and Unfair Business Competition
(Hereinafter regarded as ‘Indonesia Anti-Monopolistic Law’. However, as we could see
within Article 3 point c provided the purpose of this law is to prevent monopolistic practices
and or unfair business competition caused by business actors.15 Article 1 point 2 of the law
defined Monopolistic practices as the concentration of economic power by one or more
business actors, resulting in the control of the production and or marketing of certain goods

11
Soerjono Soekanto dan Sri Mamudji, Penelitian Hukum Normatif Suatu Tinjauan Singkat, (Jakarta:
Rajagrafindo Persada, 2006), 24.
12
Soerjono Soekanto.,, 21.
13
Ibid., 52
14
Ganna Fokina, "Trademark Law As A Tool Of Protection Against Unfair Competition: Lesson For
Ukraine" (Short Thesis Central European University, 2015), p.6.
15
Article 3 Law No. 5 Year 1999 concerning the Prohibition of Monopolistic Practices and Unfair
Business Competition The purposes of enacting this law shall be as follows:
a. Safeguard the public interest and enhance the efficiency of the national economy as one of the
endeavors aimed at improving the people’s welfare; b. create a conducive business climate by regulating fair
business competition in order to ensure certainty in equal business opportunities for large-, middle- as well as
small-scale business actors; c. prevent monopolistic practices and or unfair business competition caused by
business actors; and d. creating effectiveness and efficiency in business activities.
and or services thus causing unfair business competition and being potentially harmful to the
public interest. The concept of unfair practices provided by Indonesia Competition Law is
emphasized on practice of market domination in doing business or entrepreneurship. This is
in contrast to the unfair practices intended by the International Covenant on unfair practices
related to trademark, since any act of competition contrary to honest trade practices in
industrial or commercial matters will regarded as unfair competition regardless it is
dominating the economic market or not. Hence, perceiving from the scope of the object and
purpose of both law, Indonesia Competition Law understanding and provision on unfair
practices cannot be implemented in a trademark related unfair business competition.
The concept and understanding of unfair business competition is implicitly regulated
under Indonesia Trademark Law (Law No. 20 Year 2016). Namely Article 21 Paragraph 3
that stipulated that Permohonan ditolak jika diajukan oleh Pemohon yang beriktikad tidak
baik. 16 Furthermore within the elucidation of Article 21 Paragraph (3) it is stipulated that
"Pemohon yang beriktikad tidak baik" adalah Pemohon yang patut diduga dalam
mendaftarkan Mereknya memiliki niat untuk meniru, menjiplak, atau mengikuti Merek pihak
lain demi kepentingan usahanya menimbulkan kondisi persaingan usaha tidak sehat,
mengecoh, atau menyesatkan konsumen.” Derived from the aforementioned elucidation, it
could be concluded that what is intended under Article 21 Paragraph 3, bad faith in
registration that caused unfair competition is prohibited. Thus, Article 21 Paragraph (3)
provides one of the examples to determine unfair competition, which is through bad faith
registration. However, in regards to the elucidation of Article 83 paragraph (2) that provided
unfair competition as the ground to filing civil lawsuit, there is no further explanation
provided by Indonesia trademark law in regards to the elaboration of what act that could be
regarded as unfair practices as the ground for filing civil lawsuit. Hence, unfair competition
that is intended by the elucidation Article 83 Paragraph (2) is remained undefined.

2. Analysis on Civil Litigation Mechanism intended by Article 83 Paragraph (2)


In a glance, Article 83 could serves as the exception towards the first-to-file principle,
providing that the lawmakers apprehend the significance of protecting well-known trademark
against bad-faith competitor, thus, well-known trademark holder is given the rights to protect
their trademark against infringement, although such trademark is not registered in the

16
Indonesia. Undang Undang Merek (Trademark). Law No. 20 Year 2016, State Gazette No. 252 Year
2016, Supplemental State Gazette No. 5953. Art. 20 Para. 3. “Application shall be rejected if an Applicant with a
bad faith files it.” (Unofficial Translation by The Author)
Directorate General of Intellectual Property. However, when the aforementioned article is
being examined thoroughly, the lawsuit intended for protecting unregistered well-known
trademark cannot be immediately lodge towards the defendant, as Article 83 Paragraph (2)
explicitly stipulated that “Lawsuit as stipulated by paragraph (1) shall be filed by an owner of
a well-known mark which includes the owner unregistered well-known trademark17 based on
a court decision”. Hence, in order to file the lawsuit the owner of unregistered well-known
trademark shall obtain court decision on the matter.
As Indonesia trademark law only dispenses this two provision in regards of lawsuit for
unregistered trademark holder to which is under Article 83 and Article 76, it could be derived
that the court decision referred by Article 83 is the court decision in regards of cancellation
lawsuit provided by Article 76. Hence, in order for the owner of unregistered well-known
trademark to have the legal capacity to file a civil lawsuit, the owner shall file a cancellation
lawsuit beforehand and obtain court decision that has cancelled the trademark that is deemed
to have violated/infringed the said unregistered well-known trademark. The reasons for filing
cancellation lawsuit is referring to the stipulation under Article 21 of Law No. 20 year 2016,
thus, related to well-known trademark the cancellation lawsuit shall pertain to be filed for:
1. Well-known Mark owned by another party for goods and/or services of the same kind.
2. Well-known Mark owned by another party for goods and/or services not of the same
kind which is in compliance to particular requirements.
For well-known mark that is not in the same kind, such ‘particular requirements’ are
stipulated under Article 19 Paragraph (3) and (4) of Ministry of Law and Human Rights
Decree No. 67 Year 2016 concerning Trademark Registration, which are: 18
1. Any objection submitted in writing by the owner of the trademark to the Application.
Such objection shall comprises of a reason and accompanied with sufficient evidence
that the registration by the other party has similarity in essence or in its entirety for
goods and / or services that are not the same kind with the mark of the applicant's
objection petitioned by another party is a well-known trademark.19
2. Well-known trademark that are already registered.
Thus, it shall be deducted that the cancellation lawsuit could only filed by the owner of
unregistered well-known trademark for the same kind of goods and/or services, as the

17
Indonesia Trademark Law. Elucidation of Article 83 Paragraph (2).
18
Ministry of Law and Human Rights Decree No. 67 Year 2016 concerning Trademark Registration.
Article 19 Paragraph (3)
19
Ministry of Law and Human Rights Decree No. 67 Year 2016 concerning Trademark Registration..
Article 19 Paragraph (4)
aforementioned Ministry Decree provided that cancellation lawsuit for well-known trademark
for a different kind of goods and/or service could only be filed by registered well-known
trademark.
Notwithstanding, Article 76 paragraph (2) equipped the rights for unregistered well-
known trademark owner to file cancellation lawsuit with one pre-requisite in which, it is
stipulated that “Owner of unregistered mark may file a lawsuit as stipulated by paragraph (1)
after he/she has submitted an application to the Minister”.20 Under Article 1 point 8 of Law
No. 20 Year 2016 concerning Trademark and Geographical Indication it is given in the
definition of application intended by Law No. 20 Year 2016 is “Application is an application
for registration of a Mark or Geographical Indications”21. Thus, the owner of unregistered
well-known trademark shall only be able to file cancellation lawsuit if he/she has submitted
an application for trademark registration to the Ministry of Law and Human Rights. Hence,
the owner of the unregistered well-known trademark shall comply with the stipulation on
trademark registration application as intended by Article 4 up to Article 15 of Law No. 20
Year 2016.
By all means that in order for an unregistered well-known trademark be able to file civil
lawsuit for the infringement, the mark contained within such trademark has to be
acknowledged and accommodate by Indonesia Trademark Law as in order to file a civil
lawsuit, applying for trademark registration is necessary. In the light of that, mark that is
acknowledge within Indonesia Trademark law is as a graphic in the form of a picture, logo,
name, word, number, composition of colors, in the form of 2 (two) dimensional, and/or 3
(three) dimensional, voice, hologram, or combinations of 2(two) or more said elements as to
differentiate goods and/or services that produced by a person or a legal entity in its goods or
services trading activity.22
Table 1. The Duration and Mechanism of filing civil lawsuit for unregistered well-known trademark
No. The Procedure Duration/Time limit Addressed to:

20
Indonesia Trademark Law. Article 76 Paragraph (2), “Pemilik Merek yang tidak terdaftar dapat
mengajukan gugatan sebagaimana dimaksud pada ayat (1) setelah mengajukan Permohonan kepada Menteri.”
21
Indonesia Trademark Law. Article 1 point 8 of law No. 20 Year 2016, “Permohonan adalah
permintaan pendaftaran Merek atau pendaftaran Indikasi Geografis yang diajukan kepada Menteri”
22
Indonesia Trademark Law. Article 1 Paragraph 1
1. Registration of Trademark Registration documents examination: Ministry of Law
- 15 working days, could be extended to 30
Application and Human Rights
working days if there is deficiency 23 since the
application receival date
- Time for the applicant to complete the
deficiency= 2 months (60 working days) after the
letter of notification of deficiency24
Total days on documents examination= 90 working
days

Substantive examination:
150 working days25

Total duration of Registration Application= 240


working days.

2. Cancellation Lawsuit Commercial Court:26 Commercial Court


90 working days could be extended 30 working
and Supreme Court
days = 120 working days
(Cassation and
Cassation:27
Judicial Review)
90 working days

Judicial Review:28
180 working days

Total duration of Cancellation Lawsuit = 390


working days.

3. Infringement Lawsuit for Commercial Court: Commercial Court


90 working days could be extended 30 working
Unregistered Well-known and Supreme Court
days = 120 working days
Trademark (Cassation and
Cassation:
Judicial Review)
90 working days

Judicial Review:
180 working days

Total duration of unregistered well-known


trademark lawsuit = 390 working days.

Total Duration for Unregistered Well-known Trademark Lawsuit = 1.020 working days.

3. Analytical Comparison of Article 83 Paragraph (2) with Passing Off in UK & PRC

23
Ministry of Law and Human Rights Decree No. 67 Year 2016 concerning Trademark
Registration,Article 9 Paragraph (3)
24
Ministry of Law and Human Rights Decree No. 67 Year 2016 concerning Trademark Registration,
Article 10 Paragraph (2)
25
Ministry of Law and Human Rights Decree No. 67 Year 2016 concerning Trademark Registration,
Article 13 Paragraph (1)
26
Indonesia Trademark Law, Article 85 Paragraph (7)
27
Indonesia Trademark Law, Article 88 Paragraph (8)
28
Law No.14 of 1985 as amended by Law no. 5 of 2004 on the Supreme Court, Article 69
The law of passing off origins from common law of the United Kingdom (the UK). The
concept of passing off was prevalent from the 17th century where in the cases the House of
Lords categorized it under tort of deceit and defamation. The principle behind passing off is
that as Lord Judge Halsbury has rightly put, “nobody has any right to represent his goods as
the goods of somebody else”. In short, passing off is a tort that the goods of the defendant are
falsely represented as the goods of the plaintiff, usually, by using the plaintiff’s indications as
means of misrepresentation. The doctrine of passing off saw its inception to meet a landmark
case that aid that nobody can sell any others products under the guise that it belongs to him. 29
It is an unfair competition where one person tries to profit from the reputation of another in a
business or commercial endeavor. In case of passing off, there is no statutory protection and is
completely based on based purely on case law and without any statutory basis in legislation or
statutory instrument.30
The tort of passing off is typically ‘used as a second string’ to an action for trademark
infringement. However, the tort also offers plaintiffs ‘a flexibility that makes it attractive in
situations not covered by the statutory regimes’. 31 Of these situations, at least two are
significant. First, trademark statutes do not permit suits for the infringement of unregistered
marks, but permit suits for passing off. Thus, a trader who owns an unregistered mark can
prevent competitors from using it through a passing off action. Second, the tort of passing off
aims to prevent misrepresentations against badges of goodwill. 32 Hence, the unregistered
trademark that has goodwill and reputation shall be able to protect their trademark through
passing off civil lawsuit.
As it is a non-statutory right, the precedent of elements to determine an action of
passing off is determined by the landmark case Reckitt & Colman Products Ltd v Borden Inc,
Lord Judge Oliver, that provided classical trinity to determine passing off, namely the first,
trademark shall obtain goodwill or reputation of trademark that has distinctive aspect, whether
it is inherently distinctive or has acquired secondary meaning, by means that the trademark
become distinctive by continuous usage and acquired the distinctiveness from the consumer.33;
the second one, is misreprentation, by all means is that it may be express, as where there is a

29
Reddy v. Banham (1896) A.C. 199 p. 204., as quoted by Anamika Bhaduri, "Trademark: Infringement
And Passing Off" (n.d.), accessed December 8, 2017, http://www.rslr.in/uploads/3/2/0/5/32050109/trademark-
_infringement_and_passing_off.pdf.
30
Ibid., p. 135
31
Lionel Bently and Brad Sherman, Intellectual Property Law, 3rd ed. (OUP, 2009), p. 727.
32
Ibid.
33
Christopher Wadlow, The Law Of Passing-Off: Unfair Competition By Misrepresentation (London:
Sweet & Maxwell, 2011) as quoted by Peter Charleton and Sinéad Reilly.
statement that the defendant’s goods are made by the plaintiff, or it may be implied, as where
the defendant manufactures or packages his goods to look like the plaintiff’s 34; and the third
element is damage as proof that misrepresentation is such as to be likely to cause substantial
damage to the owner of the goodwill is crucial.35
Although passing off could protect the unregistered well-known trademark, it is
however a common law practices and non-statutory rights; hence, it is not ‘apple to apple’ to
compare it to Indonesia trademark protection that adopt civil legal system and using statutory
rights in protecting trademark. In light of that, People’s Republic of China (‘PRC’) also adopt
civil legal system and first-to-file in its trademark protection, in spite of that, PRC affords a
certain degree of protection towards unregistered well-known trademark through the idea of
passing off lawsuit that is modified and adjusted into their legal system.36
Article 13 of the PRC Trademark Law provided that if an unregistered trademark is a
well-known trademark in China, another party cannot reproduce, imitate or translate it and
apply for registration or use it on the same or similar goods/services. The unregistered
trademark owner can oppose or cancel a trademark application/registration, or request a local
Authority for Industry and Commerce to prevent unauthorized use by other parties on the
same or similar goods/services.37 . In addition Article 58 of PRC Trademark Law stipulated
that "Whoever uses a registered trademark or an unregistered well-known trademark of
another party as the trade name in its enterprise name and mislead the public, which
constitutes unfair competition, shall be dealt with in accordance with the Anti-unfair
Competition Law of the People's Republic of China.” Thus, protection towards unregistered
well-known trademark in PRC is handed over to PRC 1993 Unfair Competition Law, and
passing off is regarded as form of unfair competition.
Article 5 Paragraph (2) – (4) of 1993 PRC Unfair Competition Law is often perceived
as ways of the PRC Trademark Law embedded passing off, as it is proceed that business
entity is prohibited from committing passing off as a form of unfair competition through any
of the following means that will cause buyers to mistake the business entity’s products for the
well-known commodities of another party.38 It stipulated that:

34
Peter Charleton and Sinéad Reilly, p. 7
35
Ibid.
36
China: Unregistered Rights In A First To File Environment - World Trademark
Review", Worldtrademarkreview.Com, last modified 2017, accessed December 9, 2017,
http://www.worldtrademarkreview.com/Magazine/Issue/54/Country-correspondents/Unregistered-rights-in-a-
first-to-file-environment.
37
PRC Trademark Law, Article 13
38
PRC 1993 Unfair Competition Law, Article 5 Paragraph (2)
A business operator shall not harm his competitors in market transactions by resorting
to any of the following unfair means:
(1) Passing off a registered trademark of another person;
(2) Using for a commodity without authorization a unique name, package, or decoration
of another's famous commodity, or using a name, package or decoration similar to that
of another's famous commodity, thereby confusing the commodity with that famous
commodity and leading the purchasers to mistake the former for the latter;
(3) Using without authorization the name of another enterprise or person, thereby
leading people to mistake their commodities for those of the said enterprise or person;
or
(4) Forging or counterfeiting authentication marks, famous-and-excellent-product marks
or other product quality marks on their commodities, forging the origin of their products
or making false and misleading indications as to the quality of their commodities.39

Based on provision provided above, Article 5 paragraph (2) – (4) shall served as the
legal ground for filing civil lawsuit to protect unregistered well-known trademark as within
the elements contains within the aforementioned article is similar to the passing off doctrine
in the UK. Namely, it is required that the trademark shall be famous/well-known thus it is
refers that the trademark has to established reputation and goodwill. The provision also
mentioned misleading/confusing and misrepresentation of other famous/well-known
trademark. In which, it shares the same elements with misrepresentation elements in passing
off doctrine in the UK. Both in the PRC and UK civil litigation intended for unregistered
well-known trademark could be filed right away, and there is no need for other steps as
provided by Article 83 paragraph (2) of Indonesia Trademark Law such as shall obtained
court decision through cancellation lawsuit and has to registered the trademark.
The elements contains within PRC provision and UK passing off doctrine share the
same underlying ideas to protect unregistered well-known trademark that cannot be protected
under registration within the trademark law, thus they offer other measure of protection in
form of this civil lawsuit. Whereas, although Article 83 Paragraph (2) stipulated unregistered
well-known trademark shall be able to file lawsuit, however there are the requirement to
obtain cancellation lawsuit and in order to do that the owner shall apply for registration
application. Thus, based on that it is safe to say the Article 83 Paragraph (2) does not share
the same idea as passing off lawsuit implementation to protect unregistered well-known
trademark with the UK implementation nor in PRC.
Table 2. Elements under U.K, PRC, and Indonesia Trademark Law
Passing Off Doctrine U.K People’s Republic of China Indonesia Trademark Law

39
Translation of PRC Trademark Law provided by WIPO
1. Reputation/Goodwill 1. Well-known 1. Well-known
2. Misrepresentation 2. Distinctive 2. Unrightfully usage
3. Damage 3. Confusion 3. Similarity in its essential
4. Misrepresentation part or its entirety
5. Unauthorized usage 4. An act of unfair
competition
5. Based on court decision

Moreover, in regards to the indication that is protected, the passing off doctrine shall be
able to provide broader scope of protection towards indication that is not protected Section 1
Paragraph 1 UK Trademark Act 1994, Mark is any sign capable of being represented
graphically, Any sign that capable of distinguished. In particular, consist of: words, design,
letters, numerals, or the shape of goods or their packaging. Whereas in regards to the
indication that is not covered shall be able to file civil lawsuit as long as it fulfilled the
requirement to has goodwill/reputation, there is misrepresentation, damage, and the trademark
shall be distinctive regardless the indication.
In PRC civil lawsuit intended for unregistered well-known trademark, it also covers
broader indication as the registration of trademark is defined under Article 8 as any signs,
including words, graphs, letters, numbers, three-dimensional, symbols, color combinations,
sound or any combination thereof, that are capable of distinguishing the goods of a natural
person, legal person or other organization from those of others may be applied for registration
as trademarks. Hence, it could be seen that the scope of indication that could be protected
under PRC Unfair Competition Law through passing off lawsuit is broader, as the passing off
lawsuit also cover trademark dress that is not protected under Article 8 of PRC Trademark
Law, hence the trademark that in unregistered and cannot be protected through PRC
Trademark Law will be protected under PRC Unfair Competition Law.
In comparison with indication of trademark that could be protected by the civil lawsuit
as intended by Article 83 (3) of Indonesia Trademark Law, due to the reason that the process
of filing lawsuit has to go through registration process, thus, the indication that could be
protected through the civil lawsuit is exactly the same with indication that accommodated for
registrable trademark, which are the indication provided by Article 1 Paragraph (1) of
Indonesia Trademark Law. Hence, the enactment of Article 83 paragraph (2) only intended
for protecting unregistered well-known trademark that fulfill the criteria and indication for
trademark registration but yet still has not registered their trademark yet. Whereas, for the
unregistered well-known trademark that is unable to register the trademark due to the reason
that the indication is not accommodated by Indonesia Trademark Law, such as scent and trade
dress, Article 83 paragraph (2) could not serve as their measure of protection.
Table 3. Indication within UK, PRC, and Indonesia Trademark Law
UK PRC Indonesia Trademark Law
Section 1 Paragraph 1 Article 8 of PRC Trademark Article 1 Paragraph 1 of
Trademark Act 1994: Law: Indonesia Trademark Law:
- Any sign capable of - Words - A picture
being represented - Graphs - Logo
graphically - Letters - Name
- Any sign that capable of - Numbers - Word
Indication for distinguished. - 3D - Number
In particular, consist of: - Symbols - Composition of colors
registration
words, design, letters, - Color combination - 2D/3D
numerals, or the shape of - Sound - Voice
goods or their packaging. - Any combination thereof - Hologram, combinations
- Capable of distinguish of 2(two) or more said
elements
- Differentiate goods and/or
services
Any signs that: Article 5 Paragraph (2) and (3) Refers to Article 1
of the Anti-Unfair Paragraph 1 of Indonesia
- Has goodwill/reputation
Competition Law of China: Trademark Law
- Being misrepresented
Indication for - Exclusive name
- Cause damage
- Dress
civil lawsuit - Distinctive
- Ornamentation of well-
known goods
- Trade name
- A person’s name
The scope Civil lawsuit covers broader Civil lawsuit covers broader Civil lawsuit covers the
indication than indication indication than indication for same indication as indication
covers
for registration. registration. for registration.

Conclusion
Based on the notion that has been discussed and analyzed through the previous chapter,
the findings within this research paper could be concluded as follow:
1. This research has found that an act of unfair competition has emerged several times
within Indonesia Trademark Law, namely the prohibition of trademark registration in
bad faith that could resulted an act of unfair competition provided by Article 21
Paragraph (3) and as the legal ground to file civil lawsuit for unregistered well-known
trademark provided by Article 83 paragraph (2). The elucidation of Article 21
Paragraph (3) explained that bad faith/contrary to honest practice is also closely related
to unfair competition. The Indonesia Trademark Law, however, does not provide the
definition and criteria of unfair competition nor the elaboration of what act that could be
constitute as an act of unfair competition related to the civil lawsuit as intended by
Article 83 paragraph (2).
2. Based on the research and analysis conducted by the author it is could be concluded that
the enactment of Article 83 Paragraph (2) of Indonesia Trademark Law does not serve
as an exception towards the constitutive system adopted within Indonesia trademark
protection, this is due to the reason that the owner of unregistered well-known
trademark cannot directly filed the civil lawsuit, due the reason that civil lawsuit for
unregistered well-known trademark required court decision, by all means as intended by
Article 76 paragraph (2) as cancellation lawsuit. However, in order to conduct
cancellation lawsuit, unregistered trademark has to file for registration application.
Thus, the enactment of Article 83 (2) does not provide protection for the indication of
trademark other than the indication that is stipulated under Article 1 Paragraph (1) of
Indonesia Trademark Law which are a graphic in the form of a picture, logo, name,
word, number, composition of colors, in the form of 2 (two) dimensional, and/or 3
(three) dimensional, voice, hologram, or combinations of 2(two) or more said elements
as to differentiate goods and/or services. Whereas within the practices of passing off
lawsuit in the UK and PRC the indication and trademark protection provided through
civil lawsuit is way broader and not only limited to the indication that is acknowledge
through registration process, but also for the indication that cannot be registered as long
as such trademark is distinctive, whether it is inherent distinctive or acquired
distinctiveness by means of acquired secondary meaning. Furthermore, due to the
reason that the lawsuit could only be filed after commencing cancellation lawsuit, it
shows that Article 83 (2) only covers the violation of passing off towards unregistered
well-known trademark by means of third party registration. Whereas, violation of
passing off by using the unregistered well known without rightful right is not covered
under this article. In addition to that, the enactment of such Article 83 (2) also adversely
does not accommodate passing off lawsuit within Indonesia, as in comparison with the
idea of passing off implemented under the U.K, passing off lawsuit can directly be filed
through civil lawsuit without any court decision nor registration needed. Based on that,
it shows that Article 83 Paragraph (2) does not share the same ideas with passing off.

Suggestions
To accommodate extended protection and to avoid legal uncertainty in regards to
protection towards unregistered well-known trademark, it is necessary to took into
consideration to revise the provision contained under Article 83 Paragraph (2), the author
hereby propose the following suggestions that:
1. As of now, the element and definition of an act of unfair competition related to
trademark civil litigation intended within the elucidation of Article 83 Paragraph (2) is
still remain unclear, hence, it is advisable to added the definition of an act of unfair
competition related to trademark civil litigation within the elucidation of Article 83
Paragraph (2). Furthermore, it is necessary to provide legal guidance for implementing
unfair competition within trademark related lawsuit. The guideline shall be in a form of
supporting regulation such as Ministry Decree on the implementation of unfair
competition in intellectual property cases providing the category of an action that could
be constitute as an act of unfair competition, and the elements for an action that contains
bad faith that could be regarded as unfair competition related to trademark cases. The
elaboration of an act of unfair competition shall refer to International guideline as
provided by Paris Convention.

2. In order to give protection towards unregistered well-known trademark, there have to be


revision within the provision of Indonesia Trademark Law. Such provision shall be the
exception towards the first-to-file/constitutive system for trademark protection in
Indonesia, that registration shall not be required registration for filing civil litigation in
order to protect unregistered well-known trademark. The requirement to file civil
lawsuit contained within Article 83 Paragraph (2), which is based on court decision
shall be revised, so that the owner does not have to file a cancellation lawsuit and
registration application in order to protect their unregistered well-known trademark
through civil litigation. Rather, the owner of unregistered well-known trademark may
file the civil lawsuit right away without any further step. Hence, the indication of well-
known trademark that could not be registered under Indonesia Trademark Law could be
protected from being violated by bad faith competitor. Furthermore, the scope of
protection will be broader, as it will not only cover violation of unregistered trademark
in a form of registration by the third party, but also cover the violation by using the
trademark unrightfully for commercial purpose.

References
Books
Abottt, Frederick, Thomas Cottier and Francis Francis. International Intellectual Property In
An Integrated World Economy: 2010. Wolters Kluwer Law & Business, 2015.
Bently, Lionel and Brad Sherman, Intellectual Property Law, 3rd ed. OUP, 2009.

Djumhana, Muhammad and R. Djubaedillah, Hak Milik Intelektual (Sejarah, Teori dan
Prakteknya di Indonesia). Bandung: PT. Citra Aditya Bakti, 1997.

Dornis, Tim W. Trademark And Unfair Competition Conflicts: Historical-Comparative,


Doctrinal And Economic Perspective. Cambridge: Cambridge University Press, 2017.

Harahap, Yahya. Tinjauan Merek Secara Umum dan Hukum Merek di Indonesia Berdasarkan
Undang-Undang No. 19 Tahun 1992, ed. 1. Bandung: Citra Aditya Bakti, 1996.

Harahap, Yahya. Tinjauan Merek Secara Umum. Bandung: Citra Aditya Bakti, 1996.

Hilliard, David Craig, Joseph N Welch and Uli Widmaier. Trademarks And Unfair
Competition. Lexis Nexis, 2008.

Kagramanto, L. Budi. Larangan Persekongkolan Tender (Perspektif Hukum Persaingan


Usaha). Srikandi, 2007.

Kurniasih, Dwi Agustine. Perlindungan Hukum Merek Terdaftar dari Perbuatan Passing Off
(Pemboncengan Reputasi) Bagian I. Media HKI. Desember 2008.

Mamudji, Sri et al., Metode Penelitian dan Penulisan Hukum. Depok: Badan Penerbit
Fakultas Hukum Universitas Indonesia.

McCarthy, J. Thomas. Trademarks And Unfair Competition. Rochester, N.Y: Lawyers Co-
operative Pub. Co., 1973.

Michaels, Amanda and Andrew James Steedsman Norris, A Practical Guide To Trade Mark
Law. New York, NY: Oxford University Press, 2014.

Nusantara, Abdul Hakim G. & Benny K. Harman. Analysis and Comparison of the
Antimonopoly Law of the Prohibition of Monopolistic Practices and Unfair Business
Competition. Jakarta: Elex Media Komputindo - Gramedia, 1999.
Phillips, Jeremy. Trade Marks At The Limit. Cheltenham, UK: E. Elgar, 2006.

Prakoso, Joko. Perselisihan Hak Atas Merek di Indonesia. Yogyakarta: Liberty, 1987.

Prodjodikoro, Wrijono. Perbuatan Melanggar Hukum: Dipandang dari Sudut Perdata.


Bandung: Sumur Bandung, 1967.

Riswandi, Budi Agus dan M. Syamsudin. Hak Kekayaan Intelektual dan Budaya Hukum.
Jakarta: PT. Raja Grafindo Persada, 2005.

Rizaldi, Julius. Perlindungan Kemasan Produk Merek Terkenal Terhadap Persaingan Curang.
Bandung : PT Alumni, 2009.

Setiawan, R. Pokok-pokok Hukum Perikatan. Bandung:Putra abardin,1999.

Soekanto, Soerjono dan Sri Mamudji. Penelitian Hukum Normatif Suatu Tinjauan Singkat.
Jakarta: Rajagrafindo Persada, 2006.

Suryodiningrat, R. M. Pengantar Ilmu Hukum Merek, Jakarta: Pradnya Paramitha, 1976.

W. Mostert, Frederick. The Trademark Reporter, Well-Known and Famous Marks: Is


Harmony Possible in Global Village. Vol. 86 TMR

Wadlow, Christopher. The Law Of Passing-Off: Unfair Competition By Misrepresentation.


London: Sweet & Maxwell, 2011.

Journals
Banerjee, Arpan. ‘Spill Over Reputation in Passing Off Action: Indian and English Law
Compared’. ip.indiana.edu, https://goo.gl/ZZ9PKd

Barker, Brandon. "The Power Of The Well-Known Trademark: Court Should Consider
Article 6Bis Of The Paris Convention An Integrated Part Of Section 44 Of The Lanham
Act". Washington Law Review Association, (2006).
Bhaduri, Anamika. "Trademark: Infringement And Passing Off" (n.d.). Accessed December 8,
2017. http://www.rslr.in/uploads/3/2/0/5/32050109/trademark-
_infringement_and_passing_off.pdf.

Bryer, Lanning G. "International Trademark Protection".


http://www.inta.org/trademarkadministration/Documents/InternationalTrademarkProtec
tion-Bryer.pdf, (2017).

Chang, Ai-Tang Irene. "Whether a Trademark Qualifies As a Well-Known Mark?-


Application Of Bad Faith in Determining The Degree Of Well-Knowness". Vol. 1
NTUT J. of Intell. Prop. L. & Mgmt, (2012).

Charleton, Peter and Sinéad Reilly. "Passing Off: An Uncertain Remedy". Fordham
Intellectual Property Conference. Cambridge University, (2015). Accessed December
18, 2017, http://fordhamipconference.com/wp-content/uploads/2015/04/7B-4-
Charleton-Peter-PDF.pdf

Croze, Denis. "Protection Of Well-Known Marks". Journal of Intellectual Property Rights 5,


(2000). Accessed November 27, 2017,
http://nopr.niscair.res.in/bitstream/123456789/19496/1/JIPR%205%283%29%20137-
151.pdf.

Grinberg, Maxim. “The WIPO Joint Recommendation Protecting Well-Known Marks and the
Forgotten Goodwill”. Chicago-Kent Journal of Intellectual Property. Vol. 5 issue 1.
Available at: http://scholarship.kentlaw.iit.edu/ckjip/vol5/iss1/1, (2005).

Höpperger, Marcu. and Martin Senftleben, “Protection Against Unfair Competition at the
International Level – The Paris Convention, the 1996 Model Provisions and the Current
Work of the World Intellectual Property Organisation”. [s.l.: s.n.], (2005).

McKenna, Mark P. "Teaching Trademark Theory Through the Lens of Distinctiveness" .


Journal Articles, (2008).
Saunders, Katharine. "Chocosuisse - The New 'Extended Extended' Passing Off". (2000):
357-358. Accessed December 8, 2017,
https://www.victoria.ac.nz/__data/assets/pdf_file/0005/821714/Saunders.pdf.

Weightman, Hugh. "House Of Lords. The Singer Manufacturing Co. V. Loog". The American
Law Register (1852-1891) 31, no. 8, (1883).

Yale, D. E. C. "Passing Off. Trade Mark. Use of True Makers' Name." The Cambridge Law
Journal 16, no. 2. (1958): 162-63. http://www.jstor.org/stable/4504521

Yan, Li. "A Comparative Study Of Passing Off Among Of The UK, Japan And China". IIP
Bulletin 2011 Vol.20, (2011).
http://www.iip.or.jp/e/e_summary/pdf/detail2010/e22_12.pdf.

Websites & Online Articles

"International Framework Of Well-Known Trademarks Protection". Kenfoxlaw.Com. Last


modified 2017. http://www.kenfoxlaw.com/ipr-in-vietnam/12993-international-
framework.html. Accessed November 22, 2017.

“China: Unregistered Rights In A First To File Environment - World Trademark Review".


Worldtrademarkreview.Com. Last modified 2017.
http://www.worldtrademarkreview.com/Magazine/Issue/54/Country-
correspondents/Unregistered-rights-in-a-first-to-file-environment. Accessed December
9, 2017.

“Protection Against Unfair Competition". European Space Agency. Last modified 2017.
http://www.esa.int/About_Us/Law_at_ESA/Intellectual_Property_Rights/Protection_ag
ainst_unfair_competition. Accessed November 8, 2017.

“WTO | Intellectual Property (TRIPS) - Agreement Text - Contents". Wto.Org. Last modified
2017. https://www.wto.org/English/docs_e/legal_e/27-trips_01_e.htm. Accessed
November 17, 2017.
Thesis
Fokina, Ganna. "Trademark Law As A Tool Of Protection Against Unfair Competition:
Lesson For Ukraine". Budapest, Hungary: Short Thesis Central European University,
2015.

H. D. Effendy Hasibuan. “Perlindungan Merek: Studi Mengenai Putusan Pengadilan


Indonesia dan Amerika Serikat”. Jakarta: Program Pasca Sarjana Fakultas Hukum
Universitas Indonesia, 2003.

Rifadi, Ahmad. “Perlindungan Hak Milik Atas Merek dari Praktik Persaingan Curang di
Indonesia” Jakarta: Tesis Magister Universitas Indonesia, 2007.

Regulations and Other Instruments


Indonesia. Law No. 21 Year 1961 regarding Company Marks and Commercial Marks. State
Gazette of 1961 No 290, Elucidation in Supplementary State Gazette No 2341.

Indonesia. Peraturan Menteri. Ministry of Law and Human Rights Decree No. 67 Year 2016
concerning Trademark Registration. State Gazette No.2134, 2016

Paris Convention of Industrial Property

People’s Republic of China. Trademark Law 2014.

People’s Republic of China. Unfair Competition Law 1993.

United Kingdom. Trademark Act 1994

WIPO Intellectual Property Handbook, WIPO Publication No. 489 E, Second Edition, 2004

Das könnte Ihnen auch gefallen