Summary:
From the case of GoTo, the importance of trademark for any company, big or small, cannot be underestimated. Through Law 20/2016 regarding marks and geographical indications, trademark serves one of the most important assets to a company. Trademark allows for a company to protect and distinguish their trademark for another company’s trademark. With the principle of ‘first to file’, any company that registers their trademark without taking into consideration the Principle of Distinguishment in article 20 (e) of Law 20/2016, will be rejected and by the Directorate General or, the registered can be sued using a Trademark Violation Lawsuit.
Recently Indonesia was shaken with news involving two reputable companies, Gojek and Tokopedia, as in 2021, they made their public announcement on the plan to merge their company which then they named GoTo. Although the name seems legitimate, not long after the establishment of the company, the name GoTo became a problem as it was a matter of a lawsuit submitted by PT. Terbit Financial Technology where they claimed that the name GoTo has similarities with their trademark.[1]
GOTO (trademark owned by PT. Terbit Financial Technology) stated that they have requested the trademark for GOTO and has been accepted by the Directorate General of Industrial Property Rights and Ministry of Law and Human Rights with certificate number IDM00085218 for class 42. On that basis of similarities between Gojek and Tokopedia’s GOTO and PT Terbit Financial Technology’s GOTO, PT Terbit Financial Technology filed a lawsuit against Gojek and Tokopedia requesting a claim on compensation for the usage of ‘GoTo’ with the sum amount of 2,08 trillion rupiah.[2]
The development of trademark in Indonesia serves as one of the utmost valuable assets for a company. Trademark validation not only offers the required transparency for all parties to assess the worth of the deal, but it also prevents any unanticipated complications after the merger is finalized.[3] The undeniable importance of a trademark to a company inherently obliges the company to properly register and diligently maintain their rights, especially when they have an interest to conduct a lawful merger; specially to avoid unexpected after-the-fact findings that limit the breadth of. Thus, it is important for a company to register their trademark to protect their assets.[4]
Through the actions of Gojek and Tokopedia merging their mega corporations, we can exemplify the importance of trademark as they immediately applied for ‘GoTo’ as their trademark. By virtue of Article 21 paragraph 2(a) of Law Number 20 of 2016 which stipulates that “The application [of a trademark] would be rejected if the Mark is or resembles the name or abbreviation of …. name of a legal entity owned by another person, except with the written consent of the person entitled” as Gojek and Tokopedia now holds the name of GoTo, it means that the trademark applied is protected.
When a company is registering their new trademark, there are several things that have to be taken into consideration, as Indonesia adopts the Constitutive System and ‘First to File’ principle which means that whoever registers first, then he is the one who is entitled to the rights of said trademark.[5] A company has to ensure that the brand they are registering a trademark for, will have a novel element and if someone registers a trademark that is similar to an existing one, there will be a possibility that the authority will decline the request.[6]
An element of distinguishment is one of the crucial elements in Indonesian trademark law as it is stipulated in Article 20 sub-article (e) on Law Number 20 of 2016 regarding Trademark and Geographical Indication. Article 21(1) of Law 20/2016 further stipulates regarding the element of differentiation between trademarks as a crucial factor of a trademark; which includes shapes, placement, writing, or a combination between the elements, including the pronunciation of said trademark.[7]
To further elaborate on the element of distinguishment, there are Supreme Court Decisions that rules regarding the matter of similarities pertinent to trademark. One of the examples being Putusan Mahkamah Agung Number 789 K/PDT.SUS-HKI/2016. In the decision the judge ruled out that in accordance with permanent jurisprudence of the Indonesian Supreme Court Number 279 PK/Pdt/1992 dated 6 January 1998, stated that trademarks that has similarities in its essence shall include:
- Similarity of form
- Similarity of composition;
- Similarity of combination;
- Similarity of elements;
- Similarity of sound;
- Phonetic similarity;
- Similarity of appearance.[8]
Similarly, according to World Trademark Symposium that was held in Cannes on 5-9 February 1992 there are several elements to examine whether two trademarks have similarity or not, those elements being:
- Similarity of appearance;
- Similarity of sound;
- Connotation similarity of appearance;
- Similarity in commercial impression; and
- Trade channel similarity.[9]
Although the Directorate General has the obligation to reject an application for trademark if there are similarities in principle or in its entirety to a Mark belonging to another party that has been previously been registered for similar goods and/or services, it does not rule out the possibility of a trademark violation. A trademark violation lawsuit is a legal remedy that can be filed in the interest of the rightful owner of a certain trademark. In the event where a person tries to register a registered trademark, a trademark violation lawsuit can prove of a registrant’s bad faith and can amount to the cancellation of the trademark. [10]
A trademark violation lawsuit is a lawsuit that could be submitted under the grounds of bad faith of a person to win or succeed more in the market competition[11] as it is stipulated in Article 76 paragraph (1) and (2) of Law 20/2016 which stipulates that the rightful owner of a trademark could file a lawsuit against another party which, in principle or in its entirety, uses the same mark illegally, in the form of a claim for compensation and the termination of acts relating to the use of the mark, that could be filed to the Commercial Court (Pengadilan Niaga).
Under these grounds, a rightful owner of a trademark could ask for compensation for damages, account of profit, and injunction which consist of prohibition to continue the act.[12] Trademark violation lawsuit is different from trademark annulment lawsuit, trademark annulment is a method used by one party to seek and delete the presence of a mark registration from the General Register of Marks, or to cancel the validity of rights based on a trademark certificate.[13] A lawsuit for the annulment of a trademark can be filed at any time if the registered mark is a mark that is contrary to morality, religion, decency or public order. However, the decision on trademark annulment lawsuit could not be appealed to court as it can only be appealed in means of cassation.[14]
There are many cases within the topic of trademark, for instance Bernard Kaligis & Associates has dealt with several cases regarding trademark violation; namely, Nadiana Sakti with the case number of 4/Pdt.Sus-Merek/2022/PN.Niaga.Jkt. Pst. and Water Polo with the case number of 69/Pdt.Sus-Merek/2021/PN.Niaga.Jkt. Pst. which is currently being adjudicated through Commercial Code.
As reflected above this article, the trademark GoTo that was submitted by Tokopedia and Gojek was sued under the grounds of violation of trademark which is commonly mistaken as trademark annulment lawsuit. As the trademark that was submitted by them has similarities in looks and using the same name as the GOTO trademark owned by PT. Terbit Financial Technology, the dispute was submitted through trademark violation lawsuit and not from trademark annulment lawsuit. That is due to the fact that the trademark has yet only been submitted for protection and has not been accepted by the Directorate General of Intellectual Property, once the trademark has been accepted and protected by the law, any other parties could not file a trademark violation lawsuit as they could only file a lawsuit against GoTo under the grounds to annul said trademark.
Referensi:
[1] Yusuf & Nistanto, Gojek dan Tokopedia Resmi Merger Menjadi GoTo, Tekno Kompas, 17 Mei 2021, <tersedia di: https://tekno.kompas.com/read/2021/05/17/12583867/gojek-dan-tokopedia-resmi-merger-menjadi-goto> Diakses pada 4 Maret 2022
[2] Ibid; Sutrisna & Maullana, Ketika Gojek dan Tokopedia Diperkarakan GoTo yang Sudah Banyak Digunakan, Gojek—Blog, Gojek and Tokopedia combine to form GoTo, the largest technology group in Indonesia and the “go to” ecosystem for daily life, 17 May 2021 <tersedia di: https://www.gojek.com/blog/gojek/goto/> Diakses pada 7 Maret 2022
[3] Lawyer Monthly, The Importance of Trademark in Mergers & Acquisitions, 27 Maret 2017, <tersedia di: https://www.lawyer-monthly.com/2017/03/the-importance-of-trademarks-in-mergers-acquisitions/> Diakses pada 4 Maret 2022
[4] Ibid.
[5] Abdurahman, Asas First to File Principle dalam Kasus Hak Merek Nama Terkenal Bensu, AKTUALITA, 3:1, 2020
[6] Sudaryat, Hak Kekayaan Intelektual, 2010, Bandung: Oase Media
[7] Agung Sujatmiko, Prinsip Penegakan Hukum Pelanggaran Perjanjian Lisensi Merek Terkenal, MMH, 40:3, 2011; Lasut, Penyelesaian Sengketa Gugatan atas Pelanggaran Merek Menurut Undang-undang Nomor 20 tahun 2016 tentang Merek dan Indikasi Geografis, Lex Et Societatis, 7:1, 2019
[8] Dwipayani & Fazriyah, Perkara Penolakan Pembatalan Merek Terdaftar dalam Gugatan Perdata Analisis Putusan Pengadilan Niaga Jakarta Pusat Nomor 02/Merek/2002/PN.Niaga.Jkt.Pst, Ganesha Law Review, 3:2, 2021
[9] Harahap, Tinjauan Merek secara Umum dan Hukum Merek di Indonesia berdasarkan Undang-undang No. 19 tahun 1992, Bandung: Citra Aditya Bakti, 1996
[10] Saraswati & Ibrahim R, Pembatalan Merek Karena Adanya Kesamaan Konotasi dengan Merek Lain yang Telah Terdaftar, Kertha Semaya : Journal Ilmu Hukum, 7:4, 2019
[11] Sujatmiko, Penyelesaian Sengketa Merek Menurut Undang-undang Nomor 15 tahun 2001, JHAPER, 2:1, 2016
[12] Rahmi Jened, 2006, Penyalahgunaan Hak Eksklusif Hak Kekayaan Intelektual, Disertasi, Program Pascasarjana Universitas Airlangga, Surabaya, 2006
[13] Ibid.
[14] Supra note 11