1
LAW ENFORCEMENT AGAINST BUSINESS ACTORS WHO
COMMIT TRADEMARK COUNTERFEITING
Introduction
The increasing business competition in the current era of global trade both at home
and abroad, makes the role of Intellectual Property Rights (IPR) truly important, especially
to maintain healthy business competition and to prevent the possibility of unfavorable
competition such as piracy and imitation. Intellectual Property Rights, abbreviated as "IPR"
or the acronym "HaKI", is the equivalent of the word commonly used for Intellectual
Property Right (IPR), which is the right that arises for the results of brainstorming that
produces a product or process that is useful for humans.1 The formulation of Article 2 (VII)
of the World Intellectual Property Organization (WIPO)2 explains that IPRs are rights
relating to literary, artistic, and scientific works; performances of performing artists,
phonograms and broadcasts; inventions in all fields of human endeavor; scientific
discoveries; industrial designations; protection against unfair competition; and all other
rights resulting from intellectual activity in the industrial, scientific, literary, or artistic
fields.
The characteristics of a product can be introduced through a brand, because through a
brand a product can have a high selling value and as a sign of distinction against other
products.
With the development of time, the need for legal protection of trademarks is often
required, among others due to improved means of transportation. Cross-business both trade
and industry, resulting in the law on Intellectual Property Rights we can not avoid to enter
into our legal system. Since 2016, several new laws have been enacted in the field of IPR,
one of which is the Law on Trademarks and Geographical Indications. Article 1 paragraph
(5) of Law Number 20 Year 2016 related to Trademarks and Geographical Indications, reads
"the right to a trademark is an exclusive right granted by the state to the owner of a
registered trademark for a certain period of time by using the trademark itself or granting
permission to other parties to use it." In general, the provision of trademark protection has
the purpose of preventing unfair business competition, because it is unfair if the work of a
person's idea (trademark) is not given legal protection.
2
Through that basis, it is appropriate that a trademark is given legal protection and the
other party is prohibited from using the trademark without the permission of the owner. In
order for the purpose of trademark protection to be realized, it is necessary to have legal
certainty in trademark protection. Legal certainty is realized in the constitutive system that
exists in Act No. 20 Year 2016. Trademarks must be registered in advance to the Directorate
General of Intellectual Property, hereinafter referred to as DJKI, to obtain ownership of the
trademark. There are also international regulations regarding trademarks, namely the Paris
Union Convention whose focus is to ensure the protection of industrial property rights.4 The
ownership of the trademark will be recognized after registering the trademark with the
DJKI.5 The main requirement in registering a trademark is to ensure that the trademark has
been owned by the DGKI.
The trademark has its own characteristics so that it has a strong element of distinction
with the trademarks owned by other businesses. Therefore, the DJKI cannot accept the
trademark registration and provide appropriate legal protection.6 In addition, the DGKI can
also reject the trademark registration file if the trademark to be registered is similar to the
trademark that has been registered by other businesses. Based on Article 21 Paragraph 1 of
Law No. 20 Year 2016 explains that: "The application may be rejected by the DGKI if the
other party's trademark has been registered in advance with similar goods or services, well-
known trademarks owned by other parties for similar goods or services, well-known
trademarks owned by other parties for non-similar goods or services that meet certain
requirements, or the existence of registered geographical indications.
But in fact, many companies have difficulty in avoiding plagiarism by others of their
brands. Out there, there are many attempts to plagiarize famous brands. The purpose of
plagiarism of well-known trademarks is to market the results of a production that can be in
the form of goods or services by using popularity, reputation quality assurance about the
character, features, functions or quantity of other production goods that meet the above
conditions. Trademark plagiarism can be categorized as a form of unfair business
competition. Irresponsible parties often carry out this practice with the motive of increasing
revenue quickly, by doing so, these parties do not need to bear risks such as paying the cost
of product or service development and research, building an uncertain brand, and reducing
advertising and billboard costs.
3
Registration is not an absolute thing, as the basis of the right to trademark is
determined on the basis of first use, while the party who registered only raises the
presumption, that he was the first user, as long as there is no evidence to the contrary.
Protection that can be provided for trademark holders is not only based on registration alone
but protection in the form of compensation claims (and trademark registration cancellation
lawsuit) as well as in criminal form through law enforcement officials. Legal settlement
through civil law instruments can be done through the court (litigation) with a lawsuit for
damages and stop all acts of making, using, selling and / or circulating goods that are given
trademark rights, or out of court (non-litigation) which allows the parties to resolve the
dispute through arbitration or Alternative Dispute Resolution (ADR) by negotiation,
mediation and consolation.
Many businesses are competing to maintain the reputation of the company by keeping
the company's brand continues to innovate in order not to lose competitiveness by the
company, keep the brand made for a product then the company does not hesitate to spend
considerable promotional costs in marketing its brand into the trade market. The rule of law
serves to protect and maintain the right holder of the original trademark of the party who
will plagiarize it to market a similar trademark to take advantage.
Based on this, related to the trademark which is a form of creation of a person who
must be protected because the trademark is an intellectual property that has economic
significance for the creator. This trademark does not escape the acts in which the object can
be used by other parties, whether it is similarities in essence or similarities in its entirety
where violations that occur in the trademark rights of the trademark is the use without
permission. This act can be detrimental to the right holder of the trademark that is used.
Counterfeiting this trademark will harm various parties, both consumers and the original
trademark owner of the trademark itself. The act of counterfeiting the trademark either in
whole or in part, is done in order to get the maximum profit. This act is done to get an
increase in business quickly.
Counterfeiting in the field of trademark generally aims to gain profit, where the crime
in the field of trademark is one of the fast-growing criminal activity caused by developments
in the field of technology and information. Crimes in the field of trademark is one of the
4
fast-growing criminal activity due to the development in the field of technology and
information that makes it easier to increase in business development for business people in
competing in the field of trade, of course, such things will greatly disrupt the wheels of the
economy in United States on a national scale and regional scale. If detailed elements in the
Act No. 20 Year 2016 which regulates the criminal offense against the trademark
counterfeiting consists of an unlawful act, the existence of intentional acts and the object is
the same trademark in essence with a registered trademark belonging to another party.
The trademark crime mentioned above is possible to take action against some
producers to cut corners by running fraudulent business behavior, namely by counterfeiting
and imitating the trademark of certain goods or services. Counterfeiting and impersonation
of trademarks committed by some manufacturers harm consumers but also harm the actual
owner of the trademark.
Research Methods
The research method in this writing uses a normative juridical approach because the
author conducts an inventory of laws and regulations governing the problem of trademark
counterfeiting. This research uses a conceptual approach as well as a statutory approach.
Discussion
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
5
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
6
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
7
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
8
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
9
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
10
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
11
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
12
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
13
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
14
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
15
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
16
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
17
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
18
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
19
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
20
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
21
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
22
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
23
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
24
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
25
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
26
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
27
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
28
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
29
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
30
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
31
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
32
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
33
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
34
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
35
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
36
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
37
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
38
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
39
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
40
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
41
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
42
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
43
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
44
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
45
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
46
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
47
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
48
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
49
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
50
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
51
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
52
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
53
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
54
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
55
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
56
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
57
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
58
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
59
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
60
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
61
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
62
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
63
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
64
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
65
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
66
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
67
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
68
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
69
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
70
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
71
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
72
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
73
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
74
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
75
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
76
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
77
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
78
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
79
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
80
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
81
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
82
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
83
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
84
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
85
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
86
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
87
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
88
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
89
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
90
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
91
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
92
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
93
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
94
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
95
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
96
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
97
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
98
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
99
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
100
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
101
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
102
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
103
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
104
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
105
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
106
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
107
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
108
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
109
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
110
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
111
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
112
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
113
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
114
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
115
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
116
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
117
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
118
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
119
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
120
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
121
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
122
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
123
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
124
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
125
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
126
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
127
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
128
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
129
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
130
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
131
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
132
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
133
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
134
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
135
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
136
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
137
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
138
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
139
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
140
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
141
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
142
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
143
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
144
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
145
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
146
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
147
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
148
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
149
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
150
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
151
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
152
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
153
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
154
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
155
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
156
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
157
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
158
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
159
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
160
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
161
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
162
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
163
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
164
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
165
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
166
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
167
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
168
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
169
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
170
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
171
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
172
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
173
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
174
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
175
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
176
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
177
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
178
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
179
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
180
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
181
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
182
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
183
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
184
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
185
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
186
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
187
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
188
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
189
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
190
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
191
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
192
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
193
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
194
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
195
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
196
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
197
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
198
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
199
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
200
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
201
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
202
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
203
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
204
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
205
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
206
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
207
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
208
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
209
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
210
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
211
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
212
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
213
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
214
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
215
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
216
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
217
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
218
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
219
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
220
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
221
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
222
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
223
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
224
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
225
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
226
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
227
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
228
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
229
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
230
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
231
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
232
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
233
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
234
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
235
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
236
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
237
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
238
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
239
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
240
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
241
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
242
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
243
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
244
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
245
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
246
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
247
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
248
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
249
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
250
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
251
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
252
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
253
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
254
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
255
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
256
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
257
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
258
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
259
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
260
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
261
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
262
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
263
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
264
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
265
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
266
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
267
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
268
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
269
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
270
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
271
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
272
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
273
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
274
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
275
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
276
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
277
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
278
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
279
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
280
in the event of trademark infringement.
v General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
281
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
282
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
283
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
284
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
285
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
286
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
287
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
288
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
289
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
290
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
291
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
292
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
293
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
294
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
295
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
296
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
297
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
298
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
299
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
300
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
301
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
302
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
303
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
304
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
305
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
306
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
307
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
308
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
309
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
310
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
311
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
312
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
313
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
314
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
315
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
316
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
317
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
318
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
319
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
320
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
321
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
322
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
323
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
324
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
325
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
326
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
327
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
328
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
329
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
330
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
331
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
332
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
333
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
334
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
335
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
336
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
337
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
338
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
339
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
340
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
341
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
342
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
343
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
344
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
345
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
346
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
347
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
348
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
349
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
350
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
351
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
352
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
353
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
354
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
355
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
356
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
357
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
358
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
359
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
360
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
361
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
362
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
363
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
364
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
365
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
366
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
367
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
368
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
369
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
370
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
371
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
372
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
373
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
374
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
375
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
376
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
377
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
378
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
379
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
380
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
381
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
382
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
383
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
384
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
385
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
386
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
387
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
388
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
389
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
390
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
391
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
392
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
393
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
394
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
395
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
396
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
397
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
398
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
399
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
400
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
401
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
402
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
403
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
404
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
405
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
406
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
407
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
408
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
409
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
410
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
411
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
412
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
413
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
414
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
415
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
416
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
417
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
418
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
419
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
420
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
421
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
422
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
423
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
424
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
425
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
426
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
427
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
428
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
429
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
430
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
431
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
432
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
433
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
434
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
435
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
436
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
437
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
438
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
439
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
440
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
441
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
442
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
443
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
444
General Definition of Trademark
Brand comes from the word "brand" which in Old Norse language means "to burn".
Historically, trademarks have been practiced since 2000 BC, the emergence of trademarks
was originally due to an economic activity carried out by a person or business entity, which
is then used as an identification of the owner of a good and / or service.8 Trademark is part
of Intellectual Property Rights which is basically a sign to identify the source of goods and
services of a company from the goods and / or services of other companies. Given that
trademarks are part of trade activities or commercial activities, Law Number 20 Year 2016
on Trademarks and Geographical Indications regulates them to maintain healthy business
competence. Juridically, according to Article 1 Number 1 of Law Number 20 Year 2016
defines a trademark as a sign in the form of a picture, name, word, letters, numbers, color
arrangement, or a combination of these elements that have distinguishing power and are
used in trading activities of goods and/or services.
Law Number 20 Year 2016 on Trademarks and Geographical Indications, provides the
meaning of a trademark is a sign that can be displayed graphically in the form of images,
logos, names, words, letters, numbers, color arrangements, in the form of 2 (two)
dimensions and / or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or
more of these elements to distinguish goods and / or services produced by persons or legal
entities in the trading activities of goods and / or services. Based on this definition, if a
marketer creates a new name, logo, or symbol for a new product, then he has created a
brand.
The World Intellectual Property World (WIPO) provides a definition of a trademark
that is a distinctive sign that identifies certain goods or services produced or provided by a
particular person or company. In addition, the notion of trademark is also listed in the
agreement stated in Article 15 Paragraph (1) TRIP's Agreement, namely Any symbol or
combination of several symbols, which is able to distinguish the goods or services of a
business from other businesses, can be a trademark. These symbols, especially those in the
form of a series of words from personal names, letters, numbers, figure elements and
combinations of several colors can be registered as trademarks. Where a symbol does not
clearly distinguish the goods or services from each other, members may set conditions for its
registration on the distinguishing characteristics acquired by its use. Members may stipulate
445
a requirement as a condition for registration of a trademark, that a symbol be visualized.
Entering the reality of trading activities, the brand comes with its main functions,
namely: First, as a distinguishing mark and as a clue to the origin of goods. Second, these
functions are carried out in parallel and equally, which means that one function does not
exceed the role of another function and cannot ignore or negate each other. In interactions
and transactions between producers and consumers, brands play a role in representing
producers present in the trade area and help make it easier for consumers to characterize the
desired products and find the necessary goods.
In the literature known two kinds of trademark registration system, namely the
constitutive system (first to file principle) and declarative system (first to use principle).In
the constitutive system, the right to a trademark is obtained through registration, meaning
that the exclusive right to a trademark is given because of the registration (required by
registration). In other words, in the constitutive system of trademark registration is an
absolute thing to do. Unregistered trademark, automatically will not get legal protection.
Law Enforcement of Trademark Counterfeiting
Enforcement of Intellectual Property Rights is a commitment and consequence for
United States that must be fulfilled after participating in the program signed the
establishment of the WTO through the ratification of the multilateral agreement in Law
Number 7 of 1994 on the establishment of the WTO. As such, United States has participated
in implementing the principle of free trade within the framework of an agreement in the field
of international trade. The effect of the agreement for all WTO member countries is to make
it possible for member countries to export goods and services to United States at low
tariffs.11 Regulating the issue of trademarks, the government has regulated in a separate law,
namely Law Number 20 Year 2016 on Trademarks and Geographical Indications.
Theoretically, Law 20/2016 on Trademarks and Geographical Indications has provided
protection to trademark owners. Legal protection applies to Intellectual Property Rights that
have been registered and evidenced by the certificate. Registered trademarks indicate
legality for the owner which means the law only considers valid, protects, and provides
certainty that the person who registered the trademark is the rightful owner of the trademark.
The enactment of Law Number 20 Year 2016 on Trademarks and Geographical
446
Indications which is an amendment to Law Number 15 Year 2001 on Trademarks is
expected to provide legal protection to holders of registered trademark rights from legal
actions. Trademark as one form of intellectual work, has an important role for the smooth
and increased trade in goods and services.
In Article 1 point (1) of Law Number 20 of 2016 concerning Trademarks and
Geographical Indications, Trademarks are signs in the form of images, names, words, letters,
numbers, color arrangements or combinations of these elements that have distinguishing
power and are used in trading activities of goods or services. Trademarks have an important
role and function in the economy. A well-known brand maintains its goods and is a
generation for the community. As a basic conception, it can be stated 3 things, namely:
The brand used must have differentiating power from other brands;
The brand used must be original, which means that it has not been used before by
other people or companies;
The owner of the mark is deemed to be the owner of the mark in question;
Trademark crime is also a special criminal offense, which is outside the general
criminal provisions set forth in the Criminal Code. The reason is because the trademark
crime is specifically regulated as an integral part of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. So the criminal offense of trademark regulated in
Act No. 20 Year 2016 on Trademark and Geographical Indications is an inherent subsystem
intact in the trademark law. In addition, every trademark crime regulated in trademark law,
has been determined the elements of the offense. So that in its application there is no need to
use the articles in the Criminal Code.
Law No. 20/2016 on Trademarks and Geographical Indications includes criminal
penalties for anyone who intentionally and without right uses a mark that is the same in its
entirety or substantially with a registered mark owned by another party. In addition to
offense offenses, the rest are crimes. This means that the attempt to commit an offense that
is classified as a crime is still punishable by criminal penalties. The intended criminal
penalties are contained in Article 100 and Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Trademark counterfeiting based on Article 100 of Law Number 20 Year 2016 on
447
Trademarks and Geographical Indications is the use of the same mark in its entirety,
meaning that there is no difference at all between one mark and another, making it difficult
to distinguish them. While what is meant by the same, explained in the explanation of
Article 20 letter b of Law Number 20 Year 2016 on Trademarks and Geographical
Indications defines similarity to the similarity caused by the presence of prominent elements
between one brand and another that can give the impression of similarity, both regarding the
form, the way of placement, the way of writing or the combination of elements, as well as
the similarity of speech sounds contained in the brands.
The right to a trademark is an individual property right, but it does not lead to the
elimination of criminal penalties for infringement of the right to a registered trademark.
Therefore, for the orderly exercise of such right, the state also threatens criminal penalties
for certain violations of the Act. Trademark and other provisions contained in the Criminal
Code. In other words, that the right to file a claim for damages does not reduce the right of
the state to bring criminal charges against infringement of trademark rights. Trademark Law
also does not specify further the types of criminal acts of trademark rights, but clearly the act
of infringing the rights of registered trademark owners is a criminal offense in the field of
trademark as stipulated in Article 100 to Article 102 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications.
Explicitly Law Number 20 Year 2016 on Trademarks and Geographical Indications
also calls all criminal acts of using registered trademarks by bad faith parties as
"Infringement", not "Crime" located in Article 100 of Law Number 20 Year 2016 on
Trademarks and Geographical Indications. As specified in Article 103 of Law Number 20
Year 2016 on Trademarks and Geographical Indications, criminal offenses relating to
trademarks, geographical indications, and indications of origin are complaints.
Based on the description of the articles above in terms of protection and enforcement
of criminal sanctions and fines against trademark crimes, especially on trademark
counterfeiting can be divided into 2 (two) things, namely the protection and enforcement of
sanctions given to the legitimate trademark owner and the protection and enforcement of
sanctions given to the wider community that can be seen in Article 100 to Article 103 of
Law Number 20 Year 2016 on Trademarks and Geographical Indications.
448
The existence of trademark infringement committed by parties who are in bad faith
and irresponsible to the famous trademark that is infringed, will certainly cause losses felt by
producers or entrepreneurs holding rights to famous trademarks. As the injured party, of
course, the right holder of a well-known trademark will take legal action to resolve the case
of trademark infringement. It is intended that the perpetrator of trademark infringement will
no longer use a trademark that resembles in essence or in its entirety from a well-known
trademark or even stop its production activities.
Criminal sanctions against acts that violate the rights of a person in the field of
trademark in addition to specifically regulated in the provisions of the sanctions of
trademark legislation itself, also contained in the provisions of the Criminal Code. Dishonest
competition in itself is against the law, because the law provides protection to orderly
association in the business world. Dishonest competition is classified as a criminal offense
pursuant to Article 382 bis of the Criminal Code. The material act punishable by a
maximum imprisonment of 1 year or a fine of up to Rp.900,00 is to commit a deceitful act to
deceive the public or a particular person. This deception is used by the perpetrator as an
attempt to maintain or increase the proceeds of the trade or business of the perpetrator or
another person.
Based on this, it is not necessary in this offense that the mark, name or firm installed is
exactly similar to the mark, name or firm name of the other person. Thus, even if there is a
small difference, it is still punishable. The criminal acts related to the violation of
geographical indication rights and indication of origin rights are all qualified as crimes with
cumulative punishment. In addition to the Criminal Code, there are also provisions of
criminal sanctions in Law Number 20 Year 2016 on Trademarks and Geographical
Indications. The Criminal Code (KUHP) has regulated provisions on the counterfeiting of
goods, especially on trademarks or signs. The crime of counterfeiting and in relation to
marks or signs, is regulated in Articles 254, 255, 256, 258, 259, and 262 of the Criminal
Code.
Viewed from the legal aspect of the trademark problem becomes very important, in
connection with the issue of the need for legal protection and legal certainty for the owner or
holder of the trademark and legal protection of the public as a consumer of a good or service
that uses a trademark so as not to be fooled by other trademarks, it can not be denied that the
449
problem of the use of well-known and non-famous trademarks by unauthorized parties, still
widely occurs in United States where our society often thinks less economical and less
innovative. In accordance with the system adopted in Law Number 20 Year 2016 on
Trademarks and Geographical Indications, namely the first to file system (the right to the
trademark is given to the first registrant) which determines that the right to the trademark is
given to the owner of a registered trademark rather than to an unregistered trademark.
Trademark crime is classified as a complaint offense as stated in Article 103 of Law
Number 20 Year 2016 on Trademarks and Geographical Indications. Complaint offense
(klacht delict) is an offense that is adjudicated if the aggrieved interested party submits it to
the police / investigator. Complaint delict in Law Number 20 Year 2016 on Trademarks and
Geographical Indications is a setback, "If this threat of punishment and criminal prosecution
depends only on complaints from people who feel they are harmed". It would be more It is
effective if the prosecutor himself, without the need for a complaint from an interested
person, carries out prosecutorial actions in the event of irregularities in society.
The use of complaint offense in Trademark Law is understandable because it is
motivated by the choice of values that are more likely to protect the private law area than the
criminal law area. This means that the application of fines or compensation is preferred over
the application of criminal sanctions. In essence, the offense of complaint provides less legal
protection to consumers because there will not be many people who complain about
trademark counterfeiting. The enforcement of the complaint offense adopted in the
Trademark Act, the complaint offense should be changed or returned to the ordinary offense,
so as to emphasize the enforcement and legal protection of consumers and cause a deterrent
effect for the perpetrators or counterfeiters of the trademark.
Conclusion
Regulation on the issue of trademark infringement has been duatur in Law Number 20
Year 2016 on Trademarks and Geographical Indications to maintain healthy business
competence. Trademark infringement arises due to the impulse of the desire to gain profits
in trading activities by committing acts that are prohibited in trading activities such as
imitation, counterfeiting, and other violations of goods and / or services whose trademarks
have been recognized in the wider community.
450
Law enforcement for perpetrators of trademark counterfeiting is the trademark owner
can take settlement efforts depending on the factual case that occurred and imposed
sanctions in the form of criminal sanctions imprisonment, civil sanctions compensation and
administrative sanctions. However, from these provisions, administrative sanctions are the
most effective to be carried out.
The government should make the rule of law on criminal acts of trademark
counterfeiting more elaborate on the qualifications of the trademark how can be a criminal
act of trademark. Related trademark is a form of one's creation that must be protected
because the trademark is an intellectual property that has economic significance for the
creator. Trademark is not spared also from the acts in which the object can be used by other
parties, Whether it is similarity in essence or in its entirety where the infringement that
occurs in the trademark rights on the trademark is the use without permission. This act can
be detrimental to the holder of trademark rights over the trademark used. The need for
supervision and concrete law enforcement by the Department of Industry and Trade and the
Ministry of Law and Human Rights to conduct legal guidance to producers, traders and
consumers in order to reduce the number of trademark infringement and the Government
should have special provisions on trademarks so that it can better protect trademark holders
in the event of trademark infringement.
