Under the supervisions of::

Dr. Henry Soelistyo Budi, S.H.,LLM

Yossi Niken Respati, SH, MH
INTRODUCTION
“ECONOMIC DEVELOPMENT”
3 Interrelated & Interdependent Development Plans

National
long-term
development
plan

Commercial & Industrial

National
medium-term
Development INDONESIA
plan Stipulates

Master plan for

acceleration &
expansion of
Indonesia’s
economic
development
 THIS LEGAL RESEARCH AT A GLANCE
Research Questions:
1. HOW DOES INDONESIAN TRADEMARK LAW ACCOMMODATE PREVENTION RULES

AND PROHIBIT BAD FAITH INTENTION ON TRADEMARKS REGISTRATION?

2. HOW IS THE IMPLEMENTATION OF BAD FAITH CONCEPT AS REFLECTED IN THE

SUPREME COURT VERDICT NUMBER 938K/PDT.SUS-HKI/2017?

Research Purpose: Research Benefit:

To formulate critical thinking and • Engaging the development of

legal point of view regarding bad faith
in trademark register within one case
as well as contributing by enhancing
• Practically, making a reference
legal knowledge to society in a sense
of Indonesian intellectual property
rights.
law in Indonesia through legal
research on marks law regarding
bad faith in Indonesia.
for the problem solving in the
field of law or the implementation
of certain efforts.
 BACKGROUND
REWARD THEORY A BRIEF HISTORY OF TRADEMARKS REGULATION IN INDONESIA:
• COLONIAL PERIOD : DE REGLEMENT INDUSTRIEEL EIGENDOM VAN 1912.
• INDEPENDENCE : LAW NUMBER 21 OF 1961 ON COMPANY TRADEMARKS AND
COMMERCIAL TRADEMARKS.
• INDONESIA RATIFIED PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL
PROPERTY : PRESIDENTIAL DECREE NUMBER 24 OF 1979.
Inventor of new • DPR REPLACE 1961 TRADEMARKS LAW : LAW NUMBER 19 OF 1992 ON
technology
Writer TRADEMARKS.
Literature figure
• INDONESIA AGREED TO SIGN “TRIPS AGREEMENT” IN 15 APRIL 1994.
“An expression of gratitude to • AFTER JOINED WTO INDONESIA ENACTED NEW LAW : LAW NUMBER 15 OF 2001 ON

an author for doing more TRADEMARKS.

than society expects or feels • INDONESIA JOINED MADRID PROTOCOL AND REPLACE 2001 TRADEMARKS LAW:

that they obliged to do.” LAW NUMBER 20 YEAR 2016 REGARDING MARKS AND GEOGRAPHICAL
INDICATIONS.
 RESEARCH METHODS
Type of legal research:
Normative legal research with
case approach.
Legal research approach:
• Statute approach
• Case approach
• Historical approach
• Comparative approach
• Conceptual approach

Legal research material:

“Secondary data”
(Bibliography study, document
study, & record study.)
INDONESIAN TRADEMARK LAW ACCOMMODATE PREVENTION RULES AND
PROHIBIT BAD FAITH INTENTION ON TRADEMARK REGISTRATION.
NO DIFFERENCES TRADEMARK LAW NO. 15 TRADEMARK AND GEOGRAPHICAL
INDICATIONS LAW NO. 20 OF 2016
OF 2001
1. Geographical Indications Only regulated the main of The Geographical Indication is
geographical indications (there were regulated more specifically.
only 5 articles).
2. Infringement Fine Trademark infringement would be Trademark infringement will be
fined maximum 1 (one) billion rupiah. fined maximum 2 (two) billion rupiah
and fined maximum 5 (five) billion
rupiah if the said infringement
related to the mark that corresponds
with health product and environment
product that will make the human
death.
3. Well-known trademark protection Not Available There is a legal protection to the well-
known trademark owner even though it
is not registered yet.
4. Trademark certificate Not Available The registered trademark is considered
to be withdrawn and deleted if the
trademark certificate is not taken by the
applicant or attorney within 18
(eighteen) months counted from the
issuance date of certificate.
Cancellation based on Bad faith motive
ANALYSIS OF BAD FAITH
Article 76,77, and 78 of Law Number 20

Year 2016 regarding Marks and

Any action containing the intent to
counterfeit or deceive other’s mark, , if
Geographical Indications.
there are similarities on:
(The lawsuit for invalidation of a mark may be filed in
• The element of marks.
unlimited time)
• Type or product and class of goods or
services.
Experts Opinion
• Region and company’s segment.
1. Prof Dr. Rahmi Jened ,SH., MH: The trademark • Product’s operational and consumer
which has been actively used in good faith does not
behaviour.
per se adopting another mark without any trusted
usage and only attempt to hold the market.
• The origin of a product.
2. Dr. Henry Soelistyo Budi, S.H.,LLM: An intent to
deceive trademark owner and public.
 THE IMPLEMENTATION OF BAD FAITH CONCEPT AS REFLECTED IN THE SUPREME COURT
VERDICT NUMBER 938K/PDT.SUS HKI/2017).

Content of Court Verdict

• Commercial Court Verdict: According to the presiding Judge and other judges HUGO BOSS claim regarding bad faith was
considered as vague claim or “obscuur libel”. Therefore, at this point the Judges in Commercial Court rejected all claims by
plaintiff because they were not able to prove substantive similarity in ZEGOBOSS mark as bad faith.
• Supreme Court Verdict: The Judges were clearly able to see bad faith in trademark registration conducted by ZEGOBOSS in 3
point of views. Firstly, ZEGOBOSS considered in counterfeiting HUGO BOSS mark by looking at both products where
obviously appeared ZEGOBOSS placed their logo at the same spot as well as HUGO BOSS did to their products.
Secondly, the word “Boss” with double “s” tends to describe HUGO BOSS product as the substantive element. Thirdly,
HUGO BOSS as clothing brand has been recognized as a well-known mark since 2007 in Indonesia and this brand with its
variety has been marketed in Indonesia since 1990 supported by PT. Trans Fashion Indonesia.
 RATIO DECIDENDI
• Commercial Court : Bad faith intention in trademark registration cannot be found in this case. Besides vague claim
“obscuur libel” presented by the plaintiff, the other claim to cancel mark registration with unlimited time based on Article
77 paragraph (2) of Law 20/2016 juncto Article 69 paragraph (2) of Law 15/2001, was not able to be applied at this case
which stated in the elucidation of that article.

• Supreme Court : The Supreme Judges considered HUGO BOSS as the first mark owner towards other marks variety
using the word “Boss” in Indonesia. HUGO BOSS claim regarding cancelation of trademark registration against
ZEGOBOSS under bad faith, also approved by The Supreme Court. The claim regarding bad faith are approved
because the Supreme Judges were able to find substantive similarities and identical within HUGO BOSS and
ZEGOBOSS. Any ZEGOBOSS marks and its variety must be cancelled in class number 25 and 3 because the
defendant considered in conducting counterfeit towards HUGO BOSS marks.

• From the justice point of view, bad faith must be avoided because this
Experts Opinion
According to Dwi Anita Daruherdani as a Partner at Rahayu
and Partners, Law Number 20 Year 2016 regarding Marks
and Geographical Indications has been accommodating
bad faith better than the previous law. In the elucidation of
Marks and Geographical Indication bad faith can be
understood easily. Sometimes infringers have the intention
• From the legal benefit point of view, trademark itself has its own
to conduct bad faith which derogates their own affidavit. As
stated in that affidavit there is a clause stated that an
applicant registers the mark in good faith. The infringers
sometimes have deep knowledge towards a well-known
mark, which they would counterfeit.
Case Analysis
term contains derogation of rights. At this scope discussion, bad faith
has been regulated well under the Law Number 20 Year 2016
regarding Marks and Geographical Indications. The sanctions for
cancellation and deletion are assumed precisely must be existed as
how the government provide justice to all the trademark owners such
as HUGO BOSS. Then, the problem which commonly arise must be
controlled more seriously by Directorate of Marks and Geographical
Indications under the supervision of Minister of Law and Human
Rights.
benefit for the owners to be legal in differentiate their product with
others which marketed at the same class. The legal benefit can be
gained properly if the protection against bad faith in trademark
registration will improve. The improvement can be appeared from the
job performance of Directorate of Marks and Geographical Indications
in implementing the provisions stated at the applied law especially on
bad faith intention conducted by the applicant.
 CONCLUSION RECOMMENDATION

1. THE DEFINITION OF BAD FAITH ONLY 1. THE FIRST LOGICAL RECOMMENDATION

LIMITED AS INTENT TO DECEIVE. HERE, IS TO MAKE SURE THAT THE
2. THE LAW NUMBER 20 YEAR 2016 APPLICANT MUST CHECK IF THERE ARE
REGARDING MARKS AND GEOGRAPHICAL ANY SUBSTANTIVE SIMILARITY OR
INDICATIONS PROCEDURALLY HAS SOME
IDENTICAL TO OTHER REGISTERED MARK.
PROPER PROVISIONS IN PREVENTING BAD
FAITH DURING TRADEMARK REGISTRATION.
2. THE SECOND LOGICAL RECOMMENDATION
HOWEVER, THERE MUST BE MORE SERIOUS HERE IS TO ENLARGE THE BAD FAITH

SUPERVISION FOR THE SAKE OF DEFINITION IN LAW NUMBER 20 YEAR 2016

TRADEMARK PROTECTION AGAINST BAD REGARDING MARKS AND GEOGRAPHICAL
FAITH. INDICATIONS.