Trademark disputes are one of the problems that can occur in business actors, especially in well-known brands. Yes, well-known brands generally have high economic value and good business reputation, so they have great appeal which has an impact on the high economic value of a brand.
One example of a famous trademark dispute that has stolen the spotlight is the Solaria restaurant trademark dispute. Some time ago, a business engaged in the restaurant chain business with a mainstay menu of Asian dishes filed a lawsuit against the Solaris brand because it was considered very similar. Well, judging from the name it is very similar, anyway. So, what happened and how is the continuation of the trademark dispute? Check out the full chronology in the following article.
Chronology of Solaria Vs Solaris Trademark Dispute
This trademark dispute occurred between Aliyuanto as the owner of the Solaria trademark and Erwin Munandar as the owner of the Solaris trademark. It is known that the Solaria trademark has been registered in the General Register of Trademarks in class 30, class 43, class 42, class 18, class 25, class 29, class 32, and class 35. In addition, the Solaria restaurant trademark has also been registered with registration number IDM000219940 and has been extended until April 14, 2030. As the owner of the Solaria trademark, Aliyuanto has certainly obtained protection and exclusive rights. Not only that, the Solaria brand is also known to have been registered in various countries in the world, such as Singapore (with registration number 16985G), Australia (with registration number 1,222,643), Malaysia (with registration number 8008576), Vietnam (with registration number 148245), Cambodia (with registration number KH/44871/13), Saudi Arabia (with registration number 1436014777), United Arab Emirates (with registration number 261427). This proves that Solaria is a well-known brand with an international reputation. But then, Aliyuanto learned that in the General Register of Trademarks, a trademark named Solaris has been registered with registration number IDM000676148 and registration date February 27, 2020, on behalf of Erwin Munandar. Solaris is registered in class code 30 with a protection date of January 22, 2015 to January 22, 2025. This makes Aliyuanto object to the registration of the Solaris trademark because it has similarities in essence with the Solaria trademark which has been famous and registered earlier in Indonesia and in other countries. Aliyuanto sees similarities in terms of visualization and writing, in terms of pronunciation, and in terms of the type of goods protected. In addition, because Solaria is a well-known trademark and has been registered first, he considers the registration of Solaris trademark is done in bad faith, to piggyback on the fame of Solaria trademark. For this reason, Aliyuanto filed a lawsuit to cancel the registration of Solaris trademark to the District Court (PN) Makassar.
Final Verdict on Solaria vs Solaris Trademark Dispute
After passing through various stages of appeal, the Commercial Court of Makassar District Court in its decision No. 3/Pdt.Sus-HKI/2020/PN Niaga Mks also won Aliyuanto as the Solaria brand holder over a similar brand, Solaris. “Stating that the Solaris trademark register IDM000676148, registration date February 27, 2020 on behalf of the Defendant has similarities in essence with the Plaintiff’s Solaria trademark,” said the panel of judges as reported by the website of the Supreme Court (MA), Sunday (9/5/2021). Sitting as chairman of the panel was Tito Suhud with panel members Rika Mona Pandegirot and Dzulkifli. The panel considered that the two brands were in the same class, namely class 30, for the categories: Krupuk, Pilus, Noodles, Rori, Makaroni, Fried Corn (Marning), Wafer, Dry Cake, Wet Cake, Snack made from Flour, Stick Cake, Corn, Block made from Corn. “There is Similarity Of Form, the shape of the plaintiff’s mark Solaria which consists of 7 (seven) letters with a configuration of white, yellow, red and black colors with a red writing color black white combination. and the Defendant’s mark written Solaris which consists of 7 letters also uses a red writing color white combination. The font shape between the Plaintiff’s mark Solaria and the Defendant’s mark Solaris is almost the same, although the Solaria mark uses small letters and the Solaris mark uses capital letters but the shape of the letters is very similar,” said the panel. There are also similarities in speech (phonetic similarity). Where the difference between the word Solaria and the word Solaris is only in the last letter of each brand, namely (the letter A in the Plaintiff’s Solaria brand and the letter S in the Defendant’s Solaris brand).
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“Sound similarity. The sound caused by the word in the Plaintiff’s mark Solaria with the sound caused by the word in the Defendant’s mark Solaris, according to the Panel of Judges if pronounced will cause almost the same sound,” said the panel.
Then, how exactly is the protection of registered trademarks?
Basically, the trademark protection system refers to the first to file principle, which is a system in which the party who first submits an application for registration to the Directorate General of Intellectual Property (DJKI), then becomes the first party to have rights to the trademark. However, brands that already have high economic value often make many irresponsible parties try to take advantage of the brand’s well-known reputation by using similar brands, causing brand disputes. Yes, trademark disputes occur due to the similarity of the brand name or logo design, either partially or completely with the trademark of another party. The example of a trademark dispute case between Solaria and Solaris above is actually regulated in Article 21 paragraph (1) of Law Number 20 Year 2016 on Trademarks and Geographical Indications (Law 20/2016). Where the rule explains that the trademark application must be rejected if the trademark has similarities in essence or in its entirety:
- Registered trademarks owned by other parties or applied for in advance by other parties for similar goods and/or services;
- A well-known trademark owned by another party for similar goods and/or services;
- well-known trademarks owned by other parties for goods and/or services that are not similar that meet certain requirements; or
- Registered Geographical Indication.
Furthermore, Article 83 paragraph (1) of Law 20/2016 explains that the owner of a registered trademark and/or the licensee of a registered trademark may file a lawsuit against other parties who unlawfully use a trademark that is substantially or wholly similar for similar goods and/or services:
- Lawsuit for compensation; and/or
- Cessation of all acts relating to the use of the mark.
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The existence of the dispute case can prove that a trademark is very important for the running of a business. Trademark itself is used as a sign to distinguish products produced by a person or a legal entity with products produced by other parties. Well, to avoid similar cases of trademark disputes, immediately register your business trademark officially to the DJKI Kemenkumham! Don’t forget to do a trademark analysis before doing so.
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To take care of it, KH Buddy can just leave it to Kontrak Hukum. We can help business owners to register trademarks through an analysis process first, thus minimizing the risk of disputes. For information on ordering services, immediately visit the KH Services – Trademark page. If you have other business needs, you can also consult for free at Tanya KH or send a direct message (DM) to Instagram @kontrakhukum.
