The presence of brands in the business world is actually no stranger to business people. However, it is like two knives that have two sides. On the one hand, the condition indicates the awareness of the business world to Intellectual Property Rights (IPR), especially about the brand that continues to increase. But on the other hand, it turns out that there are still many people who intentionally and / or unintentionally use other people’s brands for personal gain without permission. This has also led to increasing cases of trademark infringement in Indonesia. Now if this happens to your business, it requires awareness not only on the claim that we are being the object of trademark infringement, but also have to think about the right action in resolving the trademark dispute itself. So, what actions can be taken if a business stumbles upon a trademark dispute? To avoid any missteps, check out the full explanation in the following article!
Overview of Brand Scope
Before going further to take repressive action, business actors who experience or are stumbling over trademark disputes must first understand the basics and scope of the trademark itself. When referring to Law No. 20 of 2016 concerning Trademarks and Geographical Indications (Trademark Law), a trademark can be interpreted as a sign that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color arrangements, in two-dimensional and / or three-dimensional form, sound, holograms, or a combination of two or more of these elements to distinguish goods and / or services produced by persons or legal entities in the trading activities of goods and / or services.
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Trademarks that have been registered with the Directorate General of Intellectual Property (DJKI) will get legal protection in the form of trademark rights. Where Article 1 of the Trademark Law states, the rights to the trademark is an exclusive right granted by the state to the owner of a registered trademark for a certain period of time by using the trademark itself or give permission to others to use it. The rights to the trademark may include:
Trademark
Trademarks are marks used on goods traded by a person or several persons jointly or legal entities to distinguish with other similar goods.
Service Brand
Service marks are marks used on services traded by a person or several persons jointly or legal entities to distinguish with other similar services.
What are the Forms of Trademark Infringement?
In general, there are two factors that cause trademark infringement to occur, including:
Plagiarizing Other People’s Brands
This happens when there are parties who deliberately plagiarize certain brands in bad faith. Usually, the plagiarist will hijack the big name of a well-known brand against the brand that is imitated with the motive of personal gain. With the brand awareness that has been built by a well-known brand, the perpetrator can instantly get the benefits he wants.
Pirating Other People’s Brands
The awareness of trademark protection has not been thoroughly owned by business actors. This condition will be utilized by some individuals to practice trademark piracy by consciously registering several trademarks without use. After that, the perpetrator will usually negotiate with the trademark holder by reselling it for material gain.
How to Settle a Trademark Dispute?
As a protection for the trademark, the law also provides an opportunity for the trademark owner to take various legal remedies if the trademark owner feels the rights to the trademark he owns are violated by the person. There are several efforts that can be taken to resolve trademark disputes, namely:
Civil Remedies
The first settlement of trademark disputes is through civil remedies. Based on Article 83 of the Trademark Law, if there is another party who unlawfully uses a trademark that has similarities in essence or in its entirety for similar goods and/or services with the registered trademark owner and/or registered trademark licensee, it can file a civil lawsuit to the Commercial Court. These efforts can be in the form of:
- Claim for compensation and/or
- Cessation of all acts relating to the use of the mark.
Criminal Remedies
The second settlement of trademark disputes is through criminal proceedings. Based on Article 100 of the Trademark Law, if there are other parties who unlawfully use a trademark that has similarities in essence or in its entirety for similar goods and/or services, they can also be held criminally liable under the threat of imprisonment of 4 to 5 years and a maximum fine of Rp2 billion. However, it should be noted that the principle of the implementation of the criminal act is a complaint offense, so that the effort can only be processed if there is a complaint or report from the registered trademark owner and/or registered trademark licensee.
Arbitration Remedies
In addition to the two previous efforts, trademark dispute resolution can also be pursued through arbitration or alternative dispute resolution mechanisms. There is a special body that handles alternative dispute resolution in the field of IPR, namely the IPR Arbitration and Mediation Board (BAM HKI). If the parties want to resolve a trademark dispute through arbitration, then previously the parties must make a written agreement or agreement to choose arbitration as a dispute resolution forum that can be made before or after the dispute occurs. In addition to the above efforts, trademark owners should make preventive efforts by applying for trademark registration online by following the Guidelines for the Use of Trademark Registration Application before using the trademark for goods or services to be traded.
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But before that, it is better to search for registered trademarks on the Intellectual Property Database page managed by the DJKI. This is to see whether the trademark to be registered has been registered by others or not so that the registration process runs optimally and prevents problems in the future.
KH Contact
That is the explanation of the legal remedies that can be done to resolve trademark disputes. Indeed, nowadays, we often encounter various kinds of trademark dispute cases. Well, to avoid the same thing, don’t forget to register your trademark officially to the DJKI Kemenkumham! Or if the worst possibility is that your business has stumbled upon a trademark dispute, immediately seek the help of legal professionals, one of which is Kontrak Hukum. You can conduct a free consultation with a professional expert registered with the DJKI so that it is guaranteed to be in order and safe in accordance with applicable legal provisions. For service information about brands, please visit the KH Services – Brand page. If you have other questions, you can also contact us at Ask KH or via direct message (DM) to Instagram @kontrakhukum.
