The business world is once again shocked by a trademark dispute. This time the brand dispute occurred between the world’s giant marketplace, Amazon, and a businessman from Pluit, North Jakarta, Andrew Tanuwijaya.
Chronology of Amazon Brand Dispute Vs Pluit Businessman
The dispute began when Amazon sued Andrew Tanuwijaya at the Commercial Court of the Jakarta High Court (Jakpus District Court) in 2021. In its lawsuit, Amazon argued that the “Amazon” mark owned by Andrew Tanuwijaya had not been used for three consecutive years in the trade of the registered class since the date of registration or last use. In addition, Amazon also asked the judge to order Andrew Tanuwijaya to remove his mark because it is considered to have a similar mark for class 9, namely: TV/radio antenna, satellite dish antenna, receiver, cables, audio cables, power cables, radio, mini compo, walkman, television, video, video compact disc (VCD) player, digital video disc (DVD) player, super VCD player, MP3 Player, tape recorder/deck, and microphone. Also class 11, including: AC (air conditioning), refrigerator, freezer, fan, hair dryer, oven, microwave, coffee maker, charcoal/electric grill, rice cooker, water heater, toilet, latrine, sink, hand dryer, shower, bathtub, sink, sink, gas/electric stove, kerosene stove, lantern and lamp. However, the Jakarta High Court did not budge and ruled in favor of Andrew Tanuwijaya.
Reasons for Rejection of Amazon Lawsuit
The reason for Amazon’s trademark removal lawsuit due to the non-use of the trademark for three consecutive years since it was registered is reasonable justified in law. This is in accordance with Article 74 paragraph 1 of the Trademark and Geographical Indications Law. To prove its claim, the Amazon company itself has conducted an independent survey, but found no use of the defendant’s trademarks for any type of goods covered by the defendant’s trademarks. In addition, the panel of judges also needed to calculate and consider the independent survey in terms of validity and reliability. Therefore, through Decision No. 67/Pdt.Sus-Merek/2021/PN.Niaga.Jkt/Pst, the panel of judges decided to reject Amazon’s lawsuit. The Supreme Court considered that Amazon could not prove the arguments of its lawsuit regarding the validity of the removal of registered trademarks owned by Andrew Tanuwijaya. On the contrary, Andrew Tanuwijaya’s trademark has been extended its registration until March 29, 2030 and is still circulating in the market, so the legal basis for trademark removal does not meet the requirements of Article 74 of the Trademark and Geographical Indications Law.
Learning from the Amazon Case, What is the Importance of Brand Registration?
Learning from the Amazon vs Pluit entrepreneur Andrew Tanuwijaya case, it is important for business owners and start-ups to officially register their trademarks. Trademark is one of the protected Intellectual Property Rights (IPR) in Indonesia. To obtain such protection, a trademark must first be registered with the Directorate General of Intellectual Property (DJKI) of the Ministry of Law and Human Rights. Business owners can register their trademarks with the DJKI with various graphic displays, either in the form of images, logos, names, words, letters, numbers, color arrangements in two-dimensional or three-dimensional form, holographic sound, or a combination of two or more of these elements. Once registered, the trademark must be used in accordance with the request for registration. Trademark Law requires trademark rights owners to be honest in using their trademarks, where the registered trademark must be used in accordance with the class of goods or services that are registered as well. If not used in accordance with the provisions, the registered trademark will be abolished. In this case, the party that can file a lawsuit for trademark removal, including because it is not used for three consecutive years is by an interested third party. In order to prevent a lawsuit for removal by a third party, it is also important for business owners to extend their trademark rights. Because, if the trademark has entered the due date and has not been extended, then inevitably the trademark will fall to another party and you no longer have the power to sue him. Conversely, by extending the trademark, business owners will feel a number of benefits such as:
Preventing Trademarks from being Used by Other Parties
Trademarks that have been officially registered and renewed can be used as a legal basis. This is useful so that other parties do not arbitrarily use similar trademarks on similar goods and/or services.
Maintaining a Good Business Name and Consumer Trust
With a clear trademark status that has been extended for the validity period, any type of business can more easily market a good and / or service. This will certainly also affect the good name of the business and maintain the trust of consumers.
Can be Sold Through Franchise or Franchise
If the franchise or franchise business that has been managed so far wants to keep running, it must extend the trademark rights. This is so that businesses can still use the brand name for their franchise or franchise business.
As Proof of Official Brand Ownership
When you extend your trademark protection period, you will receive a proof of application and a certificate of renewal. This certificate will be important if there is a dispute in the future.
Adding Value to Business Assets
The brand owned is a valuable asset for the sustainability of the business being undertaken. So, if the brand has been registered and then wants to extend its protection period, the value of the assets owned will increase every time.
Increased Period of Legal Protection
As mentioned, a trademark that has been registered will certainly obtain an official certificate from the authorized institution and get exclusive rights in the form of legal protection. Well, the period for the protection of the rights to the trademark itself is 10 years. However, if you make an extension for the next 10 years, then the legal protection of trademark rights can be even longer.
Obtaining the Right to Apply to Cancel a Trademark
By extending the trademark, the business owner has also extended some rights. One of the rights obtained is the right to file a cancellation lawsuit against a trademark registered by another party if the trademark has similarities with the one owned.
KH Contact
That is the review of the trademark dispute case that occurred between Amazon and Andrew Tanuwijaya. Indeed, nowadays, we often encounter various kinds of trademark dispute cases. In these cases, of course, the parties involved face each other to fight over the ownership of legitimate trademark rights. Well, to avoid a similar case, immediately register your trademark officially to the DJKI Kemenkumham! Don’t forget to check the remaining validity period of the trademark and extend the trademark.
READ ALSO: Unilever Brand Dispute with Parents, Why Register a Brand?
To do so, you can leave it to Kontrak Hukum. Through the services available, you can help business owners to register and renew their trademarks, without hassle and certainly done! For service information and reservations, visit KH Services – Intellectual Property page. If you have further questions about other business needs, you can also consult for free at Tanya KH, or send a Direct Message (DM) to Kontrak Hukum’s Instagram social media account @kontrakhukum.
