LEGAL PROTECTION OF WELL-KNOWN TRADEMARKS FOR
PASSING OFF IN BUSINESS COMPETITION PRACTICES
Introduction
In the trade of goods or services, trademark as a form of intellectual work that is
important for the smooth and increased trade in goods or services. Trademarks have a
strategic and important value for producers and consumers.1 The use of the brand is the key to
the success of the trade business carried out by a corporation in winning business competition
in the target market where the product is distributed. In addition, the function of the brand
itself is in addition to an aspect of intellectual work that has economic value is also a symbol
or sign that makes a marker of a product produced by a business entity or company so that it
can be recognized by the public as a consumer of the product.
The brand itself in terms of its position in business competition has its own role which
is quite strategic in distinguishing between one product and another product that has a similar
form but is produced by a different business entity. From this point of view, it should be
inherent in what has been produced by producers with products that have similar shapes and
types will be However, the differentiation of the trademark implies different quality and
specifications so as to have differentiating power for different brands with the same product in
the business competition over many trademarks in the market.
For consumers, brands not only facilitate identification but also become a symbol of
self-esteem. People who are accustomed to the choice of goods from a particular brand, tend
to use goods with that brand onwards for various reasons because they are familiar, trusted,
product quality, and others. So that the function of the brand as a guarantee of quality is
increasingly evident, especially related to reputable products.2 From the brand that has a good
reputation at least get qualified protection in order to create a climate of healthy business
competition in order to accommodate the use of trademarks on a trade product.
In the world of commerce itself there is at least a categorization of trademarks, the
categorization is a form of level level of fame of a brand by consumers, the level of the brand
includes a brand that has the standardity of ordinary recognition (normal mark), then a brand
with the standardity of well-known recognition (well-known mark) and the third is a brand
with the standardity of famous recognition (famous mark). Of the three categorizations of the
brand actually has a different position in the public's view of the consumerism attitude of
trade products that have different brand recognition reputations according to the 3 standards
of brand recognition.
The trademark of a product with a certain type of goods or services has become
famous for its status in society as a hierarchical form of a product's position in the eyes of its
customers, from that and the three categories also make business actors spur their business
activities in increasing the level and status of their trademarks in the eyes of the public so as
to make the trademark famous and increase the production of goods and services. The need
for legal protection of trademarks is growing from time to time after the development and
variation of the form of trademark infringement in the dimension of unfair business
competition by business actors.
A well-known brand is a sign that has a high good reputation among other brands with
high qualifications from the standardity of the product and the good quality of the product
produced makes it famous and much needed by the public as consumers or violations of a
good or service. From these activities, there are actually many problems that arise and
develop in line with the development of the business world that does not recognize the
boundaries of the country or the limits of space and time on a national, regional or
international scale. The importance of legal protection of a trademark is also based on the
incorporation of United States into the World Trade Organization (WTO) which gave birth to
a joint agreement in the field of IPR (intellectual property rights) with the agreement product
named Trade Related Aspect of Intellectual Property Rights (TRIPs).
The high reputation owned by well-known or famous trademarks can trigger acts of
trademark infringement both nationally and internationally.3 Well-known trademarks must be
given protection both on a national and international scale, because a well-known trademark
is experiencing the expansion of trade across national boundaries.4 Trademark infringement is
a bad act and violates legality because there is an element of bad faith in the use or use of
well-known or famous trademarks without permission or license from the famous trademark
holder by breaking through the norms of decency and legal norms in the trademark business
ethics in business competition.
The act of trademark infringement in relation to the hijacking of well-known or famous
trademarks is generally known as the act of Passing Off. The act of passing off is closely
related to what is called goodwill, goodwill is often used in the same sense as the word
reputation, namely as something inherent in the brand and in addition the word goodwill is
often also interpreted as "bad faith".5
Problem Identification
This article will discuss how the legal protection of intellectual property rights
(IPR) over well-known trademarks in United States, and how the legal consequences
of violations of the act of Passing Off in unfair business competition.
Research Methods
The research method in this writing uses a normative juridical approach
because the author conducts an inventory of laws and regulations governing insurance
issues. The research specification uses descriptive analytical by describing a reality
and facts related to insurance law. The data analysis technique uses a qualitative
method because it does not use formulas and numbers.
Discussion
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
Legal Protection of Intellectual Property Rights on Famous Trademark Rights in United
States
Substantively, the definition of Intellectual Property Rights (IPR) can be said to be the
right to ownership as works that arise or are born because of the ability of human intellect in
the fields of science and technology.6 Meanwhile, Helianti Hilman, in a paper entitled
Benefits of Intellectual Property Rights. Protection of Intellectual Works in the IPR System
provides an understanding that what is meant by Intellectual property rights is an exclusive
right granted by the state to a person or group of people or entities to hold a monopoly in
using and benefiting from intellectual works containing IPR.
Intellectual property rights exist in order to protect one's creations and inventions from
unauthorized use or copying by others.8 These intellectual works whether in the fields of
science, art, literature, or technology are born at the expense of energy, time, and even money.
So that the protection provided in IPR will make an incentive for creators and inventors.
IPR law is a law that must continue to follow technological developments to protect
the interests of creators. The word belonging or ownership in IPR has a more specialized
scope than the term wealth. This is also in line with the concept of United States civil law
which applies the term property to objects owned by a person. 9 Intellectual Property Rights
consist of different types of protection, depending on the object or intellectual work being
protected. In the General Agreement on Tariff and Trade (GATT) negotiations, it is stated that
Intellectual Property Rights consist of: Copyright and related rights; Trademarks;
Geographical Indications; Industrial Designs; Patents, including plant variety protection;
Integrated Circuit Layout Designs; Protection of undisclosed information; and Control of
Fraudulent Practices in License agreements.
IPR generally relates to creations and inventions that have commercial value.
Trademark as one of the products of intellectual work can be considered a commercial asset
of a company, for which legal protection is needed to protect the works of one's
intellectuality. The birth of the trademark begins with findings in the field of other intellectual
property rights that are interrelated. As in the trademark there are elements of creation, such
as logo design, letter design or number design. There is copyright in the field of art, so that the
protected is not copyright in the field of art, but the protected is the brand itself.
Brands are valuable in IPR because they are associated with the quality and
desirability of a product or service. With a brand, a person will be interested or not interested
in consuming something. Something that is not visible in the brand can make the user or
consumer loyal to the brand. This is what is immaterial property rights contained in the brand.
Trademark is a sign, but in order for the sign can be accepted by the brand, must have
a distinguishing power,11 this is due to the registration of the trademark, relating to the
granting of exclusive rights granted by the state on behalf of the name or symbol against a
business actor. To have a distinguishing power, the trademark concerned can provide current
determination or "individuali often" of the goods concerned. 12 The occurrence of differences
in the fame of a brand, also distinguishes the degree of fame owned by various brands. There
are 3 (three) types of brands known by the public:
Ordinary Marks, also known as "normal marks", which are classified as ordinary
marks are marks that do not have a high reputation. Brands that fall into this category
can be said to be les plays a role in enlivening business competition in the market. The
marketing range is very narrow and limited to local, so this type of brand is not
considered a major rival, nor is it a target for traders or entrepreneurs to imitate or
counterfeit.
Well-known marks, well-known marks are also known as "well known marks". This
type of brand has a high reputation because its symbol has the power to attract
attention. For example, Honda products, both motorcycles and cars, even until there is
an area that mentions Honda for all motorcycle brands. So that the Honda brand can be
categorized as a well known mark because of public knowledge about this brand both
at home and abroad.
Famous Mark, such is the fame of a brand that it is categorized as a "famous mark".
The degree of the famous mark is higher than the ordinary mark, so that any type of
goods under this brand immediately raises a touch of familiarity and mythical ties.14
An example that can be taken for the type of famous brand is the type of TOYOTA car
vehicle, which is very famous and recognized for its luxury.
The function of the trademark is as a differentiator between one product of goods or
services with products of goods or services made by other parties.15 The Directorate General
of Intellectual Property Rights describes the function of the trademark as follows:
As an identifier to distinguish one company's products from another (product identity).
This function also connects goods or services with their producers as a guarantee of
the reputation of its business results when traded.
As a means of trade promotion. Promotion is done through advertising. Brand is one
of the goodwill to attract consumers, a symbol of entrepreneurs to expand the market
for their products or merchandise.
As a guarantee of the quality of goods or services (quality guarantee). This benefits
the brand owner and also provides protection of the quality assurance of goods or
services for consumers.
As a designation of the origin of the goods or services produced (source of origin).
Trademark is an identifier of the origin of goods or services that connects it with the
producer or region/country of origin.16 The declarative registration system is a system
in which the
obtaining legal protection is the first user of the trademark concerned. This declarative
registration system is adopted in Law Number: 21 Year 1961. In other words, it is not
registration that creates a right to a trademark, but instead the first use in United States
that creates or gives rise to that right.17
In declarative trademark registration system, registration itself is not a necessity. This
means that the trademark owner who uses the first can still get legal protection, even though it
is not registered. To prove as a first-time user of a trademark can be by showing invoices or
bills of lading sent by the factory to the trader that includes the trademark of the goods traded,
advertisements in newspapers or television and the use of the trademark at the exhibition.
Registration in the declarative system serves more to facilitate proof, meaning that
with the letter of registration will be easy to prove if there are other parties claiming to be the
owner of the trademark in question of course this applies as long as the other party can not
prove as a first-time user of the registered trademark. So the first registrant of a trademark
only as a legal allegation as a first-time user.
Trademark registration with this declarative system contains legal uncertainty, because
the registration of a trademark at any time can be canceled if there are other parties who can
prove as the first owner of the trademark that has been registered. Therefore, registration with
the declarative system in United States has been no longer used since the enactment of Act
No. 19 Year 1992 on Trademark.
In trademark registration with a constitutive system, Trademark Registration is a must
in order to obtain rights to the trademark. Without registration, the state will not grant rights
to the trademark to the trademark owner. This means that without registering a trademark, a
person will not be given legal protection by the state if his trademark is imitated by others.
Trademark registration used in United States since Act No. 19 Year 1992 is a constitutive
system. In this constitutive system, the legal protection is based on the first registrant in good
faith. This is also as stated in Article 4 of Law Number 20 Year 2016 which states that the
trademark cannot be registered by an applicant who is not in good faith.
The trademark application must be rejected if the trademark is substantially or entirely similar
to the trademark of another party that has been registered in advance for similar goods or
services, has substantially or entirely similarities with geographical indications that are
already known. 20 Based on the provisions of the trademark requirements in order to be
registered, something can be categorized and recognized as a trademark, if: has a
distinguishing function; is a mark on goods or services (elements of images, names, words,
letters, numbers, color arrangements or combinations of these elements); does not meet the
elements that are contrary to decency and public order; is not public property; and is not a
description of, or related to the goods or services for which registration is requested.
In addition to substantive examination, an announcement mechanism must also be
taken within a maximum of 15 days by placing on a special notice board and can be easily
seen by the public in the Official Trademark News published periodically by the Directorate
General of Intellectual Property. This is done to allow aggrieved parties to challenge the
registration of the trademark and can prevent the registration of trademarks made by people
who are not in good faith.
Trademark Appeal Commission is an independent specialized body within the
Directorate of Intellectual Property Rights. The decision given by the Trademark Appeal
Commission is no later than 3 (three) months from the date of receipt of the appeal. The
decision of the Appeal Commission is final and binding. If the Trademark Appeal
Commission grants the appeal request, the Trademark Directorate shall carry out the
registration and grant the trademark certificate. If rejected, the applicant and his attorney may
file a lawsuit against the decision to reject the appeal to the Commercial Court within a period
of time no later than 3 (three) months from the date of receipt of the rejection decision.
Based on Article 1 (6), Law No. 20 Year 2016 on Trademarks and Geographical
Indications, the definition of Geographical Indications, namely:
Geographical Indication is a mark indicating the region of origin of a good and/or
product which due to geographical environmental factors including natural factors, human
factors or a combination of both factors gives a certain reputation, quality, and characteristics
to the goods and/or products produced.
Geographical indications are different from other aspects of IPR such as patents,
trademarks, copyrights and industrial designs where geographical indications as applicants are
institutions representing the community in the area that produces goods, local government
agencies authorized at both the provincial and district levels. To understand the relationship
between intellectual property rights and geographical indications can be traced from the
understanding of geographical indications themselves.
Based on the above definition, a limitation can be drawn that in fact a geographical
indication is a sign on goods that have a specific geographical origin and have a quality or a
reputation that is tested from the origin of the place. Broadly speaking, an indication
Geographical features include the name of the place and the origin of the goods. Typically,
agricultural products have qualities that derive from their place of production and are
influenced specifically by local factors, such as climate and soil. Whether a mark functions as
a geographical indication is a matter of national law and consumer perception.
The WTO defines geographical indications as place names (in some countries also
words associated with a place) used to identify the origin and quality, reputation or other
characteristics of products (for example, "Champagne", "Tequila" or "Roquefort").23 Place
names (in some countries also words associated with a place) used to identify the origin and
quality, reputation or other characteristics of products (for example; "Champagne", "Tequila"
or "Roquefort").
Protection of geographical indications can cause the value of the product to be higher,
so that geographical indications can drive the economy of a region of origin of geographical
indication products and geographical indications are aimed at the producer rather than the
farmer. The concept of geographical indication is communal protection, therefore in the
process of protection of geographical indications, the implementation can be done by
empowering NGOs, government agencies, local residents to make descriptions of their
products registered as geographical indications. The number of geographical indications in
United States is still a lot of just not monitored. New geographical indications are protected
and get protection after being registered as our IPR adheres to the first to file principle.
The role of the Directorate General of IPR, especially the Sub Directorate of
Geographical Indications in protecting products included in geographical indications, namely:
Socialization of geographical indications to regions that have geographical indication
products;
Inventorying products that have geographical indication value in collaboration with
the Regional Office of the Ministry of Law and Human Rights and related agencies;
Administration of geographical indication registration applications.
Forms of Infringement of Famous Trademarks from the Act Passing Off
In the era of free trade, trademark rights are an important factor in creating a fair trading
system. Trademark is an identifier of the origin of goods or services related to the producer
that illustrates the guarantee of individuality and reputation of goods or services at the time of
trade. In the life of trade there are always actions that try to gain profits through shortcuts by
all means such actions violate business ethics, norms of decency, and even violate the law.24
Forms of trademark infringement such as the use of the same trademark in its entirety or in
essence with a registered trademark belonging to another party, but rather imitation,
counterfeiting used on goods or services traded.
In the United States literature itself, previously the act of passing off has not been
widely recognized regarding its definition and detailed description of the form of action, but
only concluded that passing off is an act of piggybacking on a well-known brand. However, in
Anglo-American law countries (common law system) such as the United Kingdom, Australia,
Malaysia, the United States or furthermore, the former colonies or commonwealths of the
British Empire have already recognized and regulated what is meant by passing off as a form
of unfair competition in the field of trade or commerce.
Furthermore, it has been explained earlier that passing off is an act of appropriating a
well-known trademark that can harm the trademark holder.26 Passing off can be said to be an
act of trying to gain profits through shortcuts by all kinds of means and pretexts by violating
business ethics, norms of decency, and the law.27 Such actions are dishonest business actors
that often occur in trade practices. From these actions, efforts should be made to prevent and
protect well-known trademarks from the act of piggybacking on well-known trademarks
commonly referred to as passing off, therefore trademark law enforcement must get serious
attention. The attitude of attracting subscriptions or attracting clients by cheating is usually
done by an entrepreneur or business entity in advancing its own trading business and
expanding the market by increasing its sales capacity for goods or services. However, it is
done in a dishonest manner and does not use good faith in obeying and implementing
unwritten and written norms in economic relations.
Seeing the success and high reputation of a trademark by a business entity with its
products among the public as consumers of these products makes many parties take advantage
of the situation to benefit from the popularity of a brand from its creator. As a result, this
makes many parties deal with the benefits in many ways that then violate the norms of
decency and norms law in business ethics. The temptation of many parties then later become
business competitors through ways such as by piggybacking, imitating by following and
resembling both the shape and characteristics of the product of goods or services of a work of
the trademark that has a high reputation. The existence of parties who do so in relation to
business competition to be the other party who dibenceng, imitated with similarities and
resembled both the shape and characteristics of the goods or services make the party as the
creator of the trademark suffered losses in the form of decreased sales turnover of goods or
services from its customers. So that it makes fooled customers who have previously
subscribed to choose goods or services from producers who have a well-known trademark to
other brands that piggyback off the famous trademark, on the one hand more concerning again
it gets a unilateral claim for products or services from other parties who piggyback on the
famous trademark, from such actions that the bad faith arises from an infringement on the
rights of the trademark brand on unfair business competition.
In principle, an action can be categorized as passing off, if it meets three elements.28
The first element is the reputation of the business actor, namely if a business actor has a good
business reputation in the eyes of the public and his business is well known by the public.
Such circumstances are utilized by the business actor's competitors. The second element is the
existence of misrepresentation, in this case the well-known brand owned by the business
actor, if there are other business actors who hijack the same brand, the public is easily fooled
(misleading) or confusion occurs in choosing the desired product. The third element, there is a
loss arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to a brand that has been recognized so that there is a
mistake in choosing a product by the public (public misleading).
In accommodating the act of passing off in United States, to provide protection for
holders of well-known trademark rights in United States should be regulated in the law of
prohibition of monopoly and unfair business competition or anti-monopoly law or more
specifically in the law on trademarks by the United States government. However, in the law
on prohibition of monopoly and unfair business competition or anti-monopoly law, the
regulation through Law Number 5 Year 1999 on Prohibition of Monopoly and Unfair
Business Competition on passing off does not appear and is regulated rigidly.
The content contained in Law Number 5 Year 1999 on the Prohibition of Monopoly
and Unfair Business Competition clearly and in detail only regulates the prevention of trade
monopoly and commercial practices that hamper and prevent competition in the market. It is
implied that the existence of antitrust regulations is intended only to ensure that there are
adequate clauses on business competition in open or closed markets for goods or services and
prevent a business entity from becoming so powerful through monopolistic practices,
monopsony, market control and conspiracy. Therefore, Law Number 5 Year 1999 on
Prohibition of Monopoly and Unfair Business Competition does not regulate passing off as a
form of unfair business competition.
Furthermore, discussing the content in Act No. 20 Year 2016 on Trademarks and
Geographical Indications, the content in the trademark regulation has undergone a shift and
further accommodations of the provisions of the trademark regulations previously stipulated
in Act No. 15 Year 2001 on Trademarks. The shift is a re-amendment in accommodating
developments in international trademark law because United States joined the World Trade
Organization (WTO). The changes include: (a) changes in title, (b) expansion of the type of
trademark, (c) changes in the flow of the trademark registration process, (d) the period of
trademark registration process until a certificate of right is granted. (e) renewal of trademark
registration, (f) international trademark registration, arrangements regarding geographical
indications, (h) arrangements regarding criminal provisions.
Related to the act of piggybacking on a well-known trademark (passing off) is an
illegal act in business competition and if the piggybacking trademark is registered to the
Directorate General of IPR of the Republic of United States will also be rejected because it is
considered as a trademark that has similarities in essence. Furthermore, the basis for the
rejection of the application for registration of trademarks that have a pattern of similarity in
essence is regulated in the provisions of Article 21 paragraph 1 of Law Number 20 Year 2016
on Trademarks and Geographical Indications, especially if it is based on actions that contain
bad faith according to the provisions of Article 21 paragraph 3.
The provision of Article 21 paragraph 1, states that the application is rejected if the
trademark is substantially or wholly similar to: a registered trademark owned by another party
or applied for in advance by another party for similar goods and/or services, a well-known
trademark owned by another party for similar goods and/or services, a well-known trademark
owned by another party for non-similar goods and/or services that meet certain requirements,
or a registered Geographical Indication. Meanwhile, Article 21 paragraph 3 states that the
application will be rejected if it is filed by an applicant with bad faith.
The provisions of the two paragraphs actually implied a meaning that is almost the
same as the act of passing off a trademark by an entrepreneur or business entity. The act of
passing off itself is an act of piggybacking on a well-known trademark, it is based on the fact
that well-known trademarks are already known and become common in the community for
goods or services. For this reason, the act of passing off can be analogized as a similarity
clause in essence. In addition, it has also been regulated in Trademark Law No. 15 of 2001
but Law No. 20 of 2016 concerning Trademarks and Geographical Indications regulates again
with more detail and clarity.
Conclusion
Passing off is an act of appropriation of a well-known trademark that can harm the
trademark holder. Passing off can be said to be an act of trying to gain profits through
shortcuts by all kinds of means and pretexts by violating business ethics, norms of decency,
and law. Such actions are dishonest business actors that often occur in trade practices related
to infringement of Intellectual Property Rights. Legal protection of well-known trademarks on
the act of passing off is currently inadequate because in the law of prohibition of monopoly
and unfair business competition or anti-monopoly law regulation through Law Number 5
Year 1999 on Prohibition of Monopoly and Unfair Business Competition the act of passing
off is not regulated rigidly.
The form of infringement of a well-known trademark through the act of passing off if it
meets 3 (three) criteria. First, there is a reputation that exists in the business actor, namely if a
business actor has a good business reputation in the eyes of the public and his business is well
known by the public. Such circumstances are utilized by the business actor's competitors.
Second, the existence of misrepresentation, in this case the well-known brand owned by the
business actor, if there are other business actors hijacking the same brand, the public is easily
fooled (misleading) or confusion occurs in choosing the desired product. Third, there is a loss
arising from the act of coupling or piggybacking carried out by entrepreneurs in bad faith
using a brand that is similar or similar to the trademark brand that has been recognized so that
there is a mistake in choosing a product by the public. (public misleading).
To provide legal protection for well-known trademarks from passing off in United
States, the government should regulate passing off in the law on the prohibition of monopoly
and unfair business competition or antitrust law and the law on trademarks, so that law
enforcement has a strong legal basis to take legal action for perpetrators who commit passing
off.
To minimize various forms of infringement of well-known trademarks, the
government should supervise the use of well-known trademarks, so as not to harm trademark
owners and not to reduce the potential for actions that deceive consumers of well-known
trademarks.
