The dispute over the use of the “M6” brand between two automotive manufacturers, namely BYD and BMW, provides an understanding of the importance of protecting trademark rights.
What is a Brand/Trademark?
A trademark is a sign that can be displayed graphically in the form of images, logos, names, words, letters, numbers, color arrangements, in 2 (two) dimensions and/or 3 (three) dimensions, sound, holograms, or a combination of 2 (two) or more of these elements that have distinguishing power and are used in the trade of goods or services (vide Article 1 Point 1 of Law Number 20 of 2016 concerning Trademarks and Geographical Indications, hereinafter referred to as the “Trademark Law”).
The Urgency of Brands/Trademarks
Trademarks have economic value that is intangible (intangible asset). Trademarks create perception, consumer preference, and loyalty. The economic value of a trademark can attract new customers, retain old customers, increase product selling prices, and so on.
Therefore, the Trademark Law provides exclusive rights or special rights granted by the state to registered trademark owners for a certain period, allowing the owner to use the trademark themselves or grant permission to other parties to use it.
The use of a trademark by other parties must obtain permission from the trademark owner. This permission is intended so that the trademark owner is aware of the negative impact of the use of the trademark by other parties. For example, the use of a trademark by other parties causes consumer confusion and negative consumer perceptions of the product from the trademark itself, which can reduce product sales.
Procedure for Registering a Brand/Trademark
Administratively, trademark registration goes through the following stages:
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Trademark examination and search, ensuring the proposed trademark has not been used or registered;
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Submission of Registration Application, done online via https://merek.dgip.go.id, by attaching the applicant’s identity documents, trademark sample, type of goods/services, and power of attorney (if using legal counsel);
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Payment of Official Fees;
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Examination stage;
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Public announcement for 2 months to give other parties the opportunity to file objections;
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Issuance of Trademark Certificate
If all stages are passed, a trademark certificate is issued which is valid for 10 years and can be extended.
Use of a Brand/Trademark Without Permission
Using a trademark that is identical in its entirety or essentially similar to a registered trademark without the permission of the trademark owner is declared a criminal act punishable by imprisonment of up to 10 years or a fine of up to Rp5,000,000,000 (five billion rupiah) (vide Article 100 of the Trademark Law).
Not only the user but also parties who trade the relevant product are declared to have committed a criminal act with a maximum penalty of 1 (one) year imprisonment or a fine of up to Rp200,000,000 (two hundred million rupiah) (vide Article 101 of the Trademark Law). However, it should be underlined that criminal acts related to trademarks are complaint offenses, meaning there must be a report from the registered trademark holder.
In addition to criminal sanctions, other parties using a trademark that is essentially similar or identical for similar goods and/or services are also subject to civil legal sanctions. Registered trademark owners and/or registered Trademark Licensees may file lawsuits against such parties with claims for:
a. Compensation; and/or
b. Cessation of all acts related to the use of the trademark.
Your brand/trademark is being used by others without permission?
If your brand or trademark is used by another party without permission, you can take the following steps:
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Ensure your trademark is officially registered with DJKI (Directorate General of Intellectual Property);
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Collect evidence of use;
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Send a Cease and Desist Letter (Legal Warning) to warn and stop the use of the trademark and withdraw the products, with or without a compensation claim; and
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File a criminal report if elements are met or file a lawsuit.