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2020 - Volume 3 - Number 2

Adopting Passing off Concept of Unfair Competition Into Indonesia’s Trademark Law

Ali Oksy Murbiantoro * murbiantoro.fhub@gmail.com * ORCID: 0000-0002-5851-8000
Brawijaya University, Faculty of Law, Malang, INDONESIA

Rachmad Safa’at * rachmad.safaat@ub.ac.id
Brawijaya University, Faculty of Law, Malang, INDONESIA

Yuliati * yuliaticholil@ub.ac.id
Brawijaya University, Faculty of Law, Malang, INDONESIA

Sukarmi * sukarmi@ub.ac.id
Brawijaya University, Faculty of Law, Malang, INDONESIA

Open Journal for Legal Studies, 2020, 3(2), 133-142 * https://doi.org/10.32591/coas.ojls.0302.05133m
Received: 19 June 2020 ▪ Accepted: 30 September 2020 ▪ Published Online: 8 November 2020

LICENCE: Creative Commons Attribution 4.0 International License.

ARTICLE (Full Text - PDF)

ABSTRACT:
The application of the concepts of unfair competition in Indonesia’s Trademark Law is one of the reasons as a proper solution in providing justification and argumentation basis, in terms of to answer the issue of impersonation of trademarks on different kinds goods, particularly for impersonation of domestic well known mark obtains sufficient legal basis due to the existence of protection and legal certainty for the trademark owner which is impersonated thereof. The current Indonesia trademark law basically only provide trademark lawsuit in terms of cancellation for registered mark; legal damages claim. Both lawsuits related to using unauthorized registered mark based on overall or basic similarities in the same kind of goods, although unauthorized use in different kind of good is possible to be sued but it is restricted for international well-known mark only. In addition there is such trademark lawsuit in connection with deletion registered mark means this proceeding enforce when the registered mark does not use for three years as of the mark registered. Considering that actually the concept of unfair competition basically reflect to the understanding of unlawful act (tort) which stating in the article 1365 Indonesia’s Civil Code. However, this understanding is not covered in Indonesia’s Trademark law instead of it is enforced in Indonesia’s civil law and civil procedure. Hence, if there is a trademark impersonation dispute in the different kinds of goods, the resolution of the dispute will refer to unlawful act and that lawsuit will be trialed by regular district court, even though based on trademark law for trademark lawsuit should be trialed by commercial court. Therefore, it is lead to uncertainty in terms of the authorize court which is examined and handled the said case. To include the concept of unfair competition as a part of trademark violation into Indonesia’s trademark law hopefully enable to anticipate in reducing any kind of types trademark violation occurred including in the form of violation such impersonation of domestic well-known mark in different kind of goods. This research is normative legal research with a legislation, concept, and comparative approach. The legal material with technical analysis is done by the method of interpretation. Comparing to the concept of unfair competition, passing off within Indonesia’s trademark law; International Trademark Convention will answers whether the understanding of unfair competition applied in the trademark violation in Indonesia particularly in connection with the issues of impersonation towards registered of well-known mark domestically is already proper either for domestic or worldwide perspective.

KEY WORDS: impersonation, different kinds of goods, unfair competition, well-known mark, domestically well-known mark, Article 21 Paragraph 3 of Indonesia’s Trademark Law, Article 16 Paragraph 3 of TRIPs, Article 6 of the Paris Convention.

CORRESPONDING AUTHOR:
Ali Oksy Murbiantoro (Student at Faculty of Law), Brawijaya University, Malang, East Java, INDONESIA. E-mail: murbiantoro.fhub@gmail.com.

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