Implementation of National Treatment Principle To Protect Well-known Marks in Indonesia

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Open Access at: http://lamlaj.ulm.ac.id/web/

Implementation of National Treatment Principle To Protect Well-known Marks in Indonesia

Sri Arlina¹, Anggraini Dwi Milandry²

1Faculty of Law, Islamic University of Riau Jl. Kaharuddin Nasution Nomor 113 Pekanbaru, Riau

Email :[email protected]

2Faculty of Law, Islamic University of Riau Jl. Kaharuddin Nasution Nomor 113 Pekanbaru, Riau

Email :[email protected]

Submitted : 22/08/2023 Reviewed: 28/08/2023 Accepted:19/09/2023

Abstract: This research aimed to find out if the law enforces have practices and implemented the national treatment in protecting the well-known marks in Indonesia. This research was compiled by using normative juridical, statutory, case and comparative approaches. Paris Convention and TRIPs Agreement was used as the provisions of international law. The result found that in protecting the well- known marks, the principle of national treatment has not been explicitly regulated in national trademark legislation. However, implicitly there are several Articles have been harmonized to protect the well-known marks based on the principle of national treatment, including Article 76 paragraph 2; Article 77 paragraphs 1 and 2 of Law No.20/2016, and Article 18 paragraph 3 of Permenkumham No.67/2016. Then, the implementation of the principle of national treatment in decision No.1105/Pdt.Sus- HKI/2018 jo. decision No.17/Pdt.Sus-Merek/2018/PN.Niaga.Jkt.Pst is “the same treatment” that resulted in the removal of exclusive rights for the registered owner of well-known marks. Meanwhile, the implementation of the principle of national treatment in decision No.557/K/Pdt.Sus-HKI/2021 jo. decision No.29/Pdt.Sus/

Merek/2019/PN.Jkt.Pst is “no less favorable treatment” and has been implemented appropriately to well-known marks protection, hence, the SUPERMAN trademark belonging to DC Comics as a registered well-known, has been protected.

Keywords: implementation; national treatment; well-known marks protection;

DOI: 10.32801/lamlaj.v8i2.418 INTRODUCTION

In promoting a product, communition between the produsers and consumers as an in- dividuality guarantee of product reputation is crucial. This due to a way to promote a product is through branding, it is either by using brand ambassador, brand trust or brand

image.¹Among of those forms, the thing that is always pertinent to the brand is brand im-

1 Ambar Lukitaningsih and Firti Lestari, “Pengaruh Brand Image, Brand Trust Dan Brand Ambassador Terhadap Keputusan Pembelian Produk Smartphone,”

FORUM EKONOMI: Jurnal Ekonomi, Manajemen dan Akuntansi 25, no. 1 (2023).

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age. Brand image is a society perception to name, term, sign, design symbol and or the combination of the elements for identifying the differences of products, both goods and service.²According to Philip Kotler, there are three indicators that construct a brand image.

They are corporate image, user image dan product image.³In another words, brand image is always related to both moral and economic right of a trademarks, as a result of through a marks, consumers commit to know and prove the quality of marketed products⁴. Moreover, a trademark manages to “convey” the overall values, characteristics, cultures, personalities, and use of goods or services to the consumers consistently.⁵Furthermore, trademark are also able to provide two functional benefits (that is related to the capacity to use a product. This benefit can be measured by comfort, durabil- ity and safety derived from the use of related

2 Wua Gloria Sterie, James D. D Massie, and Djurwati Soepono, “Effect Ambassador Brand and Brand Image on Product Purchase Decisions PT. Telesindo Shop as Telkomsel’s Main Distributor in Manado,” Jurnal EMBA: Jurnal Riset Ekonomi, Manajemen, Bisnis dan Akuntansi 7, no. 4 (2019).

3 Philip Kotler and Kevin Lane Keller, Marketing Management, 15th ed. (Harlow, Essex Pearson Education Limited, 2016), http://kin.perpusnas.go.id/

DisplayData.aspx?pId=130833&pRegionCode=UNT AR&pClientId=650.

4 Nurliyanti, Anestesia Arnis Susanti, and Baruna Hadibrata, “Pengaruh Harga, Promosi Dan Brand Image Terhadap Keputusan Pembelian (Literature Review Strategi Marketing Manajement),” JIHHP:

Jurnal Ilmu Hukum Humaniora dan Politik 2, no. 2 (2022).

5 Ike Vanessa and Zainul Arifin, “Pengaruh Citra Merek (Brand Image) Dan Harga Terhadap Keputusan Pembelian Konsumen (Survei Pada Mahasiswa Program Studi Administrasi Bisnis Fakultas Ilmu Administrasi Universitas Brawijaya Malang Tahun Angkatan 2013/2014 Dan 2014/2015 Pengguna Kartu Pra-Bayar Simpati,” Jurnal Administrasi Bisnis (JAB) 51, no. 1 (2017).

products) and symbolic benefits (that is related to the identity of a product. This benefit can be measured based on the aesthetics of the trademark).⁶

Each trademark has own reputation form.

Reputation attached to a mark as a form of property right that been owned by the trademark right holders. Considering in the business, reputation is viewed as one of the keys to embody the successful business. Hence for the business people, in addition to gain the profits, trademark reputation is also one of media that is needed to gain public trust. This is necessary to build loyalty and sustainable relationship with consumers.⁷ Meanwhile, in favor of consumers, trademark reputation may decrease the time consuming when faced the process of making decision to buy, use, consume a product. Associated trademark reputation may comfort the consumers about the guarantee of quality of a product. ⁸ It means, the mark of both product of goods and product of service will affect the development of a business and it can be measured by the knowledge and desire of the public to use the well-known marks.⁹ Essentially, the well-known marks is a trademark that has

6 Anisa Herawaty, “Loyalitas Konsumen : Peran Citra Merek Pasmira Di Gresik,” Psikosains: Jurnal Penelitian dan Pemikiran Psikologi 13, no. 1 (2018).

7 Gossain Jotyka and I Gusti Ketut Riski Suputra,

“Prosedur Pendaftaran Dan Pengalihan Merek Serta Upaya Perlindungan Hukum Terhadap Merek Terkenal Menurut Undang-Undang Nomor 15 Tahun 2001,” Ganesha Law Review 3, no. 2 (2021).

8 Medisita Nurfauziah Istiqmalia and Iwan Erar Joesoef, “Itikad Baik Dalam Pendaftaran Merek : Studi Perlindungan Hukum Pemilik Merek Terkenal Di Indonesia,” JPHI: Jurnal Penegakan Hukum Indonesia 2, no. 3 (2021).

9 Aulia Muthiah, Aspek Hukum Dagang Dan Pelaksanaannya Di Indonesia, Cetakan 1. (Yogyakarta:

Pustaka Baru Press, 2016).

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been integrated with the product. Moreover, most of the well-known marks has become basic needs for upper middle class, due to the well-known marks have excellent reputation and quality guarantee.¹⁰ In the mean time, generally the determination of criteria of ordinary brand and well-known is formed based on the national interest, thus, if a country has superpower trading system, then the well- knows marks criterias are built to encourage that country.¹¹ After that, by the crucial role of a trademark in business field, then matters pertinent to trademark ownership must be protected, particularly the well-knows marks owners. As a result of trademark as lifestyle determine the social class in society. Then, there is a time, when lower middle class in- tentionally buying the imitation product of well-known marks. By way of explanation, despite the fabricated, imitation and low quality of the products, these things will not affect the purchasing as long as the product named by the well-known marks.¹²

The development of counterfeit and imitation of the well-known marks will hinder the realizing of Indonesia good image both do- mestic system and international in protecting well-known marks. This is due to the essential, the protection of well-known marks accom- plished to protect the reputation or goodwill

10A.A. Ngurah Bagus Bayu Prasetia, I Nyoman Putu Budiartha, and Ni Made Puspa Sutari Ujianti,

“Perlindungan Hukum Merek Terkenal Terkait Dengan Persaingan Usaha Tidak Sehat,” Jurnal Konstruksi Hukum 1, no. 1 (2020).

11 Sri Arlina and Anggraini Dwi Milandry,

“Implementation of Legal Protection The Famous Trademarks IKEA and SEPHORA Brand (Trademark’s Law Perspective),” Jurnal Cendekia Hukum 8, no. 1 (2022).

12Farly Lumopa, Suherman, and Imam Haryanto,

“Itikad Baik Dalam Pendaftaran Merek Terkenal Di Indonesia,” Jurnal Yuridis 5, no. 2 (2018).

that is related to the integrated mark. How- ever, in fact there are many right infringement of well-known in Indonesia.¹³

Pertinent to the well-known marks right infringement, the trademark dispute “SU- PERMAN” that occurred between DC Com- ics and PT.Marxing Farm Makmur is an example of the well-known marks infringement that is interesting to be discussed and researched. In terms of protecting their mark, DC Comics has repeatedly filed a lawsuit with the Central Jakarta Commercial Court, starting with Decision Number 17/Pdt.Sus- HKI/Merek/2018/PN Niaga Jkt.Pst until the issuance of Decision Number 557/K/Pdt.Sus- HKI/2021 by Supreme Court.

It should be noted, DC Comics is the larg- est and famous comic publisher company in USA (international) which has established since 1934. Initially, DC Comics published comic that has superhero genre, and the fic- tional character was named SUPERMAN.

Since it was launched, the word SUPERMAN is well-known marks whether in USA or other countries, including Indonesia.

Then, in 1939, DC Comics enacted the word SUPERMAN as a registered the trademark in USA. Since that year, to develop their business in other areas such as product of clothing, bags, stationery etc, DC Comics has valued trademark SUPERMAN. The entire products of trademark SUPERMAN can be accessed online on the legal web owned by DC Comics. Hence after, since 1980, DC Comics has registered trademarks SUPER- MAN in the Director General of Indonesian Intellectual Property Rights. Furthermore, DC Comics also opened several outlets in In-

13Citra Rosa Budiman, “Perlindungan Hukum Terhadap Merek Terkenal (Well-Known) Di Indonesia,”

Reformasi Hukum 23, no. 1 (2019).

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donesia under DC SUPER HEROES. In addition, it is also known trademark SUPERMAN has been registered in more than 10 countries, such as England (1966), Brazil (1980), Japan (1994), Yemen (1996) and Uni Arab Emirates (2008).

Based on the facts mention above, it has been identified that trademark SUPERMAN is the well-known marks. Thus, the trademark has to be earned an exclusive protection from Indonesian Government (the Director General of Indonesian Intellectual Property Rights). However, when Decision No. 17/Pdt.

Sus-HKI/Merek/2018/PN Niaga Jkt.Pst was issued by the Central Jakarta Commercial Court, there was a deletion and cancellation the well-known marks that has been registered.

After that, in order to protect a the well- known marks, Indonesia government does not only employ the national law based on Law of the Republic of Indonesia Number 20 of 2016 concerning Marks and Geographical Indications (hereinafter referred to as Law No.20/2016) but also considering the Provi- sions of international law. This is due to one of the characteristics of well-known marks is the integrated trademark has been registered in various countries. The international provisions that have been ratified by the Indonesian Government to protect Intellectual Property Rights (especially well-known marks) are the Paris Convention and the TRIPs Agreement.

Furthermore, it is also known that in order to protect Intellectual Property Rights, the two international provisions adhere to the principles of National Treatment.

In the realm of international civil law of Indonesian, there is a theory of reciprocity and retaliation that resembles a condition of foreigners in a country, recognition of for-

eign decisions, and the use of foreign law.¹⁴ According to Sudargo Gautama, the usage of reciprocity theory in international civil law practice is relative.¹⁵ This due to, in general the employement of this theory is divided into two namely, material reciprocity (concrete, the arranged material reciprocal) and formal reciprocity (abstract, forms of equal treatment for every country, are not explained in detail. However, it has been determined, each country must treat other countries equally).¹⁶ In other words, the foreigners will be treated same as their own citizens, under circum- stances in the country the foreigner concerned also treats citizens of other countries equally, resulting in a reciprocal relationship between the two countries concerned.¹⁷ There are two forms of formal reciprocity. They are national treatment (there is assimilation of right among citizens) and most favored nation (granting privileges, partiality and benefits in the protection of industrial rights granted by a participating country to other countries must be given as soon as possible without provide certain conditions to other relevant participants).¹⁸ In one hand, by employing the national treatment principle, thus all rights and obligations of foreigners will be equated

14Ari Purwadi, Dasar-Dasar Hukum Perdata Internasional (Surabaya: Pusat Pengkajian Hukum dan Pembangunan (PPHP), 2016).

15Ronald Saija, Hukum Perdata Internasional, Cetakan Pe. (Yogyakarta: Deepublish (Grup Penerbitan CV Budi Utama), 2019).

16Sugeng, Memahami Hukum Perdata Internasional Indonesia, Edisi Pert. (Jakarta: Kencana, 2021).

17Venantia Sri Hadiarianti, Langkah Awal Memahami Hukum Perdagangan Internasional Dalam Era Globalisasi (Jakarta: Penerbit Universitas Katolik Indonesia Atma Jaya, 2019).

18Esti Royani, Buku Ajar Hukum Perdata Internasional (Yogyakarta: Zahir Publishing, 2020).

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with the citizens themselves. ¹⁹

In the international legal order, the national treatment has been involved in the Paris Convention for the Protection of Industrial Property (hereafter the Paris Convention).

This inniatiate Paris Convention was established as the difficulties of legal subjects to obtain industrial property rights in several countries.

These difficulties arise from the differences in the legal system force (regarding the protection of industrial property rights, particularly well-known marks) in each country.²⁰

Despite Paris Convention contains national treatment principle, thus in protecting a well-known marks, all countries including the members of Paris Convention have to be treaten equally. In other words, protecting well-known marks that have to be given equally for each country. In addition, national treatment is also contained in Trade Related Aspects of Intellectual Property Rights (here after the TRIPs Agreement).

Based on article 3 Paragraph 1 on TRIPs Agreement, there is a provision, each premi- nent country members require to provide equal protection to other fellow member countries regardless the origin.²¹ It means, every citizen of a country entitles to appeal the same treatment in order to obtain protection of right for

19Rifkah Mufida, “Penerapan Prinsip National Treatment Dalam Kasus Sengketa Impor Daging Ayam Antara Brasil Dengan Indonesia,” Justitia Et Pax: Jurnal Hukum 38, no. 1 (2022).

20World Intellectual Property Organization (WIPO), World Intellectual Property Handbook: Policy, Law and Use (WIPO Intellectual Property Handbook), Second Edi. (WIPO Publication, 2008).

21Carlos Maria Correa, Trade-Related Aspects of Intellectual Property Rights: A Commentary on The TRIPs Agreement (United Kingdom: OXFORD:

University Press, 2020).

well-known marks in the country concerned.

As for the trademark protection provided, by enactmenting of national treatment principle in TRIPs Agreement is protection of product availability, acquisition, continu- ity and enforcement of trademark protection and the entire matters that affecting the use of marks (especially well-known marks) that have regulated exclusively in TRIPs Agreement.²²Moreover, an example of implementation of national treatment principle is providing right of priority to the associ- ate members of Paris Convention and TRIPs Agreement. Right of priority is the right of an applicant to submit an inquiry from the origin country that incorporated with Paris Convention and TRIPs Agreement, to attain recognition of the date of receipt in the origin country is the priority date in intention country that also a member of one of the Agreements, as long as the submission is submitted within the specified time of the Paris Convention and the TRIPs Agreement itself.²³

Generally, there are two forms of regulation on principle of national treatment²⁴ namely, regulation that is equally beneficial for the parties or “the same treatment” (requires the parties be treated the same as the treatment given to their own citizens and con-

22James E. Darnton, “The Coming of Age of The Global Trademark : The Effect of TRIPs on The Well-Known Marks Exception to The Principle of Territoriality,”

Michigan State International Law Review 20, no. 1 (2011).

23OK. Saidin, Aspek Hukum Hak Kekayaan Intelektual (Jakarta: Raja Grafindo Persada, 2015).

24United Nations Conference on Trade and Development (UNCTAD), “National Treatment on UNCTAD Series on Issues in International Investment Agreements (UNCTAD-National Treatment),” Geneva : United Nation, last modified 1999, accessed September 7, 2023, https://unctad.org/system/files/official- document/psiteiitd11v4.en.pdf.

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sequently foreign parties will not be able to demand more treatment from the host country as an obligation of the host country that has agreed to an agreement. In other words, the entire countries have the same position when have agreed the agreement. Thus, this form of regulation is a rigid type. This form of regulation is composed in Paris Convention, Article 2 Paragraph 1. Furthermore, the second form of regulation on principle of national treatment is “no less favourable treatment” (this form is unrequired the “similar” treatment for citizens of the foreign party, so that it is more relative than the form of equal regulation. In other words, in practice this form of regulation of national treatment principles provides the possibility for hosts to provide treatment that is more favorable to foreign parties, compared to citizens of the host country. This form of regulation of national treatment principles is restrained in the TRIPs Agreement, specifically in Article 3).

Moreover, the national treatment in this research is the implementation of the entire regulation of well-known marks protection rules that have been regulated in national legislation associated with the implementation of civil procedural law rules in resolving trademark ownership conflicts.

After the explanation above, the focus of the problem in this research is, how is the implementation of principles of national treatment for protecting well-known marks in Indonesia (Case Study of the SUPERMAN well-known mark)?. Then, the purpose of this research was to find out whether the law enforcers and authorized parties (which is government of Indonesia) have practiced and implemented the national treatment principle in protecting well-known marks in Indonesia (a case study on the SUPERMAN well-known mark).

In addition, legal protection of well-known marks has been researched by some researchers, pertinently in Indonesia. The first research was researched by Thoyyibah Bafadhal. This research focused on the law protection of well-known marks IKEA.²⁵ It was found the criteria and norm of well-known marks established in Law No.20/2016 and judicial juris- prudence. Furthermore, it turned out that in this case, the panel of judges seemed to have ignored the positive intentions of the parties, thus the protection of the well-known IKEA mark had not been properly implemented.

The second research was researched by Rakhmita Desmayanti.²⁶ This researched revealed that the explanation regarding the well-known marks regulated in Law No.20/2016 is inaccurate, so that, it exposed the difference opinion and interpretations among law enforcers and often failed to protect the well-known marks.

The last is, was researched by A.A.

Ngurah Bagus Bayu Prasetia, I Nyoman Putu Budiartha dan Ni Made Puspa Sutari Ujianti.

27 This research focused on the legal protection of well-known marks pertinent to unfair business competition It was found that many well-known marks products that deliberately counterfeited circulation in Indonesian market. It raised the unhealthy business competition. The authors suggested the government to periodically socialize forms of infringe-

25Thoyyibah Bafadhal, “Perlindungan Hukum Terhadap Merek Terkenal Di Indonesia: Kasus IKEA,” Undang:

Jurnal Hukum 1, no. 1 (2018).

26Rakhmita Desmayanti, “Tinjauan Umum Perlindungan Merek Terkenal Sebagai Daya Pembeda Menurut Perspektif Hukum Di Indonesia,” Jurnal Cahaya Keadilan 6, no. 1 (2018).

27Prasetia, Budiartha, and Ujianti, “Perlindungan Hukum Merek Terkenal Terkait Dengan Persaingan Usaha Tidak Sehat.”

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ments that give rise to unhealthy business competition. Moreover, the business actors are expected to be more creative and could advertise their own trademark massively, in an effort to inform the public regarding the differences between genuine and well-known marks.

Above mentioned research have researched the well-known marks protection in Indonesia.

However, the focus of recent research is to discuss the implementation of the principle of national treatment as an effort to protect the well-known mark SUPERMAN.

METHOD

This research was compiled by using normative juridical. According to Soerjono Soekanto²⁸, the type of legal research that uses normative juridical methods is legal research that is carried out by examining li- brary materials as basic material for research by conducting an investigation of regulations and literature pertinent to the problem being research. The approaches used in this research were the statutory approach (to find out all the regulations for the right protection of trademark in the national trademark legal system), the case approach (to study the application of legal norms or principles carried out in legal practice, especially those related to the decision on the trademark dispute

“SUPERMAN” with the parties DC Comics against PT.Marxing Farm Makmur, that is decision No.1105/Pdt.Sus-HKI/2018 jo. decision No.17/Pdt.SusMerek/2018/PN.Niaga.

Jkt.Pst and No.557/K/Pdt.Sus-HKI/2021 jo.

decision No.29/Pdt.Sus/Merek/2019/PN.Jkt.

Pst) and a comparative approach (to find out

28Soerjono Soekanto and Sri Mamudji, Penelitian Hukum Normatif (Suatu Tinjauan Singkat) (Jakarta:

Rajawali Pers, 2001).

the comparisons of regulations protecting the trademark rights according to national law and international law). The primary legal materials employed by the researcher is the all laws and regulations pertinent to well-known marks and the entire court decisions related to the “SUPERMAN” trademark dispute (DC Comics against PT.Marxing Farm Makmur and international agreements that protect the well-known marks, particularly the Paris Convention and TRIPs Agreement).

The secondary legal materials are all publication pertinent to the legal protection of well-known marks (both national law and international law) that are not refer to official documents, text books and scientific works of scholars/experts, comments on court decisions, particularly related to the dispute over the trademark “SUPERMAN” with the parties DC Comics against PT. Marxing Farm Makmur and research findings related to the same topic. In terms of obtaining the data, the result used document studies and qualita- tive analysis. The results of the data analysis presented in an analytical descriptive manner which was compiled in the form of a research report and was described in a complete and systematic manner, then formulated as a conclusion.

ANAYLISIS AND DISCUSSION

Harmonization of the National Treatment Principles in National Trademark Legislation

Since Indonesia has become a member country of the Paris Convention and has ratified the TRIPs Agreement, it is required the legal consequences. The Indonesian government have to comply the provision of the two international agreements to protect Intellectual Property Rights. Thus far, the

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national trademark legislation that explicitly supervive the principle of national treatment has not been stood however, in order to har- monize the provisions for the protection of well-known marks (which are contained in the Paris Convention and TRIPs Agreement) in the national legal system, the Indonesian government has formed and enacted Law No.20/2016. As for various provisions based on national treatment in the Paris Convention and the TRIPS Agreement, it has been regulated in several articles in Law No.20/2016 below:

Article 3 Law No.20/2016 (the rights of all trademark owners will be protected, if their trademark has been registered in the Director General of Intellectual Property Rights), Article 21 Paragraph 1 letter b and c of Law No.20/2016 (Director General of Intellectual Property Rights will reject the application for registration of a new trademark, if the trademark has similarities with well-known marks owned by other parties, both for similar and non-similar goods and/

or services that meet certain requirements), Article 42 Law No.20/2016 (all trademark owners can grant licenses to other parties to use their trademark), Article 76 paragraph 1 of Law No.20/2016 (everyone has the right to apply for trademark cancellation), and Article 83 Paragraph 1 of Law No.20/2016 (everyone is allowed to file a lawsuit for infringement of trademark rights to other parties).

Apart from that, there are also several provisions that regulate one type of national treatment, namely the right of priority for well-known marks owners in registering, ex- tending the protection period, applying for the abolition or cancellation of registered brands that are similar to their own trademark, as the adjustment of Provision Article 6b in Paris

Convention and Article 16 TRIPs Agreement in national legal system.

They are Article 72 paragraphs 1 and 2 and Article 74 paragraph 1 of Law No.20/2016 (both the owner of ordinary and well-known marks are allowed to apply for the deletion of registered trademark to the minister and the submission of such applications can also be made by interested third parties to the Commercial Court). In other words, a trademark owner who feels that his exclusive rights have been infringement by another parties can file a lawsuit with the commercial court at the proficient general court. Furthermore, pertinent to the procedural law that applies to commercial courts in civil procedural law, in accordance with the general provisions in civil procedural law, resolving a trademark ownership conflict initiate by the process of filing a lawsuit by the relevant party and ends with the issuance of a decision by the examining panel of judges which adjudicate related cases.

In addition, if a lawsuit is submitted by a related party to the proficient court, the court is obliged to investigate whether the lawsuit is declared acceptable granted (applicable provisions), rejected (because the lawsuit is not based on law; the lawsuit is an error in persona; the lawsuit is not in accordance with absolute and relative competence as well as and the lawsuit is nebis in idem) and/or unacceptable (because obscuur libel claims/claims are vague and unclear).²⁹

Furthermore, other provisions are Article 76 Paragraph 2 of Law No.20/2016 (Provide

29Dudung Abdul Aziz and Ayu Novita Sari, “Analisis Yuridis Terhadap Gugatan Obscuur Libel Dalam Sengketa BPJS,” IUS FACTI: Jurnal Berkala Fakultas Hukum Universitas Bung Karno 1, no. 1 (2022).

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protection to the unregistered well-known marks), Article 77 Paragraphs 1 and 2 of Law No.20/2016 (well-known marks owners get an unlimited period of time in submitting a cancellation of a registered trademark similar to its own mark, if there is an element of bad faith).

At the regulation of the Minister of Law and Human Rights Number 67 Tahun 2016 (hereinafter referred to as Permenkumham No.67/2016), especially, as regulated in Article 18 Paragraph 3, there are several criteria for a well-known mark, namely the level of public knowledge or recognition of the mark;

sales volume of goods and/or services, and profits derived from the use of the trademark by the owner; the market share controlled by the trademark pertinent to the distribution of goods and/or services in the community; a range of areas of use of the trademark; period of use of the mark; trademark intensity and promotion, including the value of the investment that used for the promotion; mark registration or application for trademark registration in another country; the level of success of law enforcement in the field of trademarks, particularly regarding the recognition of the trademark as a well-known marks by the proficient authority; and the value attached to a trademark that is obtained due to the reputation and guarantee of the quality of goods and/or services protected by the mark.

Meanwhile, Article 19 paragraph 1 regulates that an application for trademark registration will be rejected if it is has similarities both in essence and/or the entirety to well- known marks belonging to another party by considering the criteria as intended in Article 18. Furthermore, Article 19 paragraph 2, stipulates that the rejection of a trademark registration application based on well-known

marks for goods and/or services that are not similar as intended in Article 16 paragraph 2 letter c must meet certain requirements and that the “certain requirements” are regulated in Article 19 paragraph 3, an objection submitted by the owner of well-known marks to the application; and it should be a well-known marks registered. Then, article 19 paragraph 4 also regulates that the objection as intended in paragraph (3) letter a, have reasons and suffi- cient evidence that the application by the other party is substantially or completely similar to goods and/or services that are dissimilar to the other party. The trademark that owned by the applicant being objected to by another party is a well-known marks.

Comprehensively, these various articles show that there has been an adoption of national treatment principle in the national trademark protecting system.

The Implementation of National Treament Principles and Right of Priority in Protecting Famous Brand in Indonesia (Case Study brand SUPERMAN)

Innately, the explanation related to the implementation of the national treatment principle in protecting the well-known marks SUPERMAN will precede the explanation of the position of the case for each decision related to the protecting of well-known marks SUPERMAN.

The first Supreme Court decision, namely Decision No.1105/Pdt.Sus-HKI/2018, this decision began with the issuance of decision No.17/Pdt.Sus-Merek/2018/PN.Niaga.Jkt.

Pst, by the Commercial Court at the Court Central Jakarta State. The parties litigating in the trademark ownership conflict are DC Comics acting as plaintiff against PT.Marxing Farm Makmur as the defendant and the Government of the Republic of Indonesia

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CqKemenkumhamCq Directorate of trademark as co-defendant.

Essentially, there are several concerns that DC comic wants to demand the panel of judges who inspect, adjudicate and pronounce the cases, it pleads the panel of judges to state that DC Comics is the party entitled to the exclusive rights to the trademark SUPERMAN;

declare that the SUPERMAN trademark on behalf of DC Comics is a well-known marks;

and cancel the trademark registration on behalf of PT.Marxing Farm Makmur which has been registered with the Director General of Intellectual Property Rights. The entirely re- quests were filed because PT.Marxing Farm Makmur produced and distributed wafer snacks using the SUPERMAN trademark without permission, causing DC Comics to feel disadvantaged. As for the legal considerations, the Panel of Judges inspect, adjudicate and decided on the cases on the case stating that the lawsuit filed by DC Comics was a joint lawsuit, so it could be categorized as a vague and unclear lawsuit.

Then, judex facti also identified that attorney had acted beyond the authority stated in the particular power of attorney. Furthermore, in the verdict with case number 17/Pdt.Sus- Merek/2018/PN.Niaga.Jkt.Pst, the panel of judges declared the claim of defendant is unacceptable.

As a result of judex facti panel of judges had not granted their demand, DC Comics tried to defend its rights again by filing an appeal to the Supreme Court, but after the issuance of Decision No.1105/Pdt.Sus-HKI/2018, DC Comics was still unable to defend its rights as owner of well-known mark (SUPERMAN), in legal considerations the panel of judges judex juris stated that judex facti was correct and corrected by declaring the claim of plain-

tiff unacceptable, thus the judex juris decision was to reject the appeal from DC Comics and DC Comics had to issue an amount of money to pay court fees.

After identifying the legal considerations of judges and and the verdict in decision No.1105/Pdt.Sus-HKI/2018 jo. decision No.17/Pdt.SusMerek/2018/PN.Niaga.Jkt.Pst, it can be concluded that essentially trademark SUPERMAN that belong to DC Comics is a well-known marks and reserve the right of trademark exclusive right. It is obtained by regarding the realization of well-known marks criteria according to Law No.20/2016 jo. Regulation of the Minister of Law and Human Rights No.67/2016.

Then based on Decision No.1105/Pdt.

Sus-HKI/2018 jo. decision No.17/Pdt.Sus- Merek/2018/PN.Niaga.Jkt.Pst, both judex facti and judex juris ignore Provision Article 77 paragraphs 1 and 2 of Law No.20/2016 which stipulates that owners of well-known marks deserve an unlimited period of time in filing for the cancellation of a registered trademark similar to their own marks, if there is an element of bad faith, thus due to judex facti and judex juris ignore these provisions, the well-known marks of SUPERMAN owned by DC Comics isn’t properly protected.

Furthermore, based on the legal consid- eration of judges and the verdict in decision No.1105/Pdt.Sus-HKI/2018 jo. decision No.17/Pdt.Sus-Merek/2018/PN.Niaga.Jkt.

Pst, both judex facti and judex juris disregard the provision Article 21 paragraph 1 letter b and c Law No.20/2016 which stipulates that the Director General Intellectual Property Rights, must reject the appeal for a new trademark registration that has similarities with the well-known marks belonging to another party, both for similar or non-similar goods and/

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or services that meet certain requirements.

After trademark SUPERMAN has been registered on behalf of DC Comics in Director General of Intellectual Property Rights since 1980 (and has also undergone an extension according to applicable regulations), while trademark SUPERMAN on behalf PT.Marxing Farm Makmur just has been registered with the Director General of Intellectual Property Rights in 1993 in the name of Sutien Susilawati (in which there has been negotiated of trademark ownership between PT.Marxing Farm Makmur and Sutien Susilawati), hence the party that reserves the right to trademark SUPERMAN should be DC Comics. In terms of trademark protection, Indonesia embraces a constitutive system (first to file system) that will protect the first register of an associated trademark.

However, the owner of the well-known marks SUPERMAN mark, namely DC Comics, has lost its exclusive rights to the SUPERMAN trademark in Indonesia.

Then, if decision No.1105/Pdt.Sus- HKI/2018 jo. decision No.17/Pdt.Sus- Merek/2018/PN.Niaga.Jkt.Pst was reanalyzed, it was identified that the form of regulation on the principle of national treatment used by the authorities in No.1105/Pdt.

Sus-HKI/2018 jo. decision No.17/Pdt.Sus- Merek/2018/PN.Niaga.Jkt.Pst has applied the principle of national treatment in the form of “the same treatment” that is rigid and the foreign party is consequently will unable to demand more treatment from the host country as the obligation of the host country which has agreed to an agreement (in this case the Paris Convention). In line with the fact that PT.Marxing Farm Makmur, as the exclusive right of SUPERMAN trademark in Indonesia, before a dispute over ownership of this trade-

mark was filed by DC Comics, that disserve the foreign parties (DC Comics) as the owner of exclusive right of SUPERMAN trademark and has registered since 1939 in the United States.

Meanwhile, if the implementation of the national treatment to protect well-known marks is reviewed based on provisions in the realm of civil procedural law, thus the judge’s legal considerations in decision No.1105/

Pdt.Sus-HKI/2018 jo. decision No.17/Pdt.

Sus-Merek/2018/PN.Niaga.Jkt.Pst is in accordance with the general provisions of civil procedural law, the panel of judges may declare a lawsuit acceptable, rejected, or unacceptable. In addition, it was identified that the lawsuit filed by DC Comics was a joint lawsuit. The application submitted is in the form of an application for cancellation of the SUPERMAN trademark owned by PT.Marxing Farm Makmur and an application for deletion of the request for the registration of the entire SUPERMAN trademark owned by PT.Marxing Farm Makmur at the Director General of Intellectual Property Rights, so that it can be categorized as a vague and unclear claim (obscuur libel) and that lawsuit by DC Comics, cannot be accepted (niet ont- vankelijk verklaard) and has implications for the non-examination of the main petitum filed by DC Comics to judge panel of judex facti.

In other words, based on decision No.1105/

Sus-Merek/2018/PN.Niaga.Jkt.Pst, the au- thor concludes that the implementation of the national treatment principle to protect well- known marks has been unimplemented as it should, so that the SUPERMAN trademark as well-known marks owned by DC Comics has not been properly protected.

The second decision of the Supreme Court

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will be analyzed is Decision No.557/K/Pdt.

Sus-HKI/2021. After identifying the case with the Decision number, it is known that this Decision initiated with the issuance of a judex facti Decision with case number 29/Pdt.

Sus/Merek/2019/PN.Jkt.Pst. The judex facti Decision is the final result of DC Comics’

efforts to maintain the exclusive rights of its SUPERMAN trademark in Indonesia.

Essentially, the concerns that DC Comics wants to demand the panel of judges who inspect, adjudicate, and pronounce the cases, remains largely the same as Decision No.17/

Pdt.SusMerek/2018/PN.Niaga.Jkt.Pst, it is to plead the panel judge to state that, but more specific and directed, that is; DC Comics is the party that reserve the exclusive right to the trademark SUPERMAN in Indonesia;

declare that the SUPERMAN trademark on behalf of DC Comics is a well-known mark;

declare that trademark registration in class 30 and class 34 on behalf of PT.Marxing Farm Makmur which has been registered in the Director General of Intellectual Property Rights is a trademark registration that was registered in bad faith; and pleads to cancel the trademark registration class 30 and class 34 on behalf of PT.Marxing Farm Makmur which has been registered in the Director General of Intellectual Property Rights.

In general, regarding various request of DC Comics as plaintiff with the principal case number 29/Pdt.Sus/Merek/2019/PN.Jkt.

Pst in their verdict the judex facti panel of judges stated to grant the claim of the plaintiff entirely. In other words, based on the decision No.29/Pdt.Sus/Merek/2019/PN.Jkt.

Pst, DC Comics is reserve the right on the trademark SUPERMAN in Indonesia.

In the mean time, PT.Marxing Farm Makmur felt disadvantaged and filled an

appeal to the Supreme Court, resulting in the issuance of decision No.557/K/Pdt.Sus- HKI/2021, which in its decision stated that rejected the cassation request from PT.Marxing Farm Makmur and sentenced it to pay court fees at the cassation level.

Then, according to judge’s legal considerations at Decision No.557/K/Pdt.

Sus-HKI/2021 jo. decision No.29/Pdt.Sus/

Merek/2019/PN.Jkt.Pst then, the researcher implied, both judex facti and judex juris have considered Provision that stipulated in Article 76 paragraph 2 of Law No.20/2016 that provides a protection to the unregistered well-known marks consistently and have also taken into account the provisions of Article 77 paragraphs 1 and 2 of Law No.20/2016 that regulates the provision owners of well-known marks may apply for cancellation of a registered trademark that similar to their marks without a period of time, if there is an element of bad intention.

Furthermore, thus based on Decision No.557/K/Pdt.Sus-HKI/2021 jo. decision No.29/Pdt.Sus/Merek/2019/PN.Jkt.Pst, ju- dex facti and judex juris have considered the provision stipulated in Article 21 Law No.20/2016 which requires the Director General of Intellectual Property Rights to reject new appeal for trademark registration that has similarities with the well-knows marks belonging to other parties, both for similar and non-similar good and or services with certain requirements.

Then, if decision No.557/K/Pdt.Sus- HKI/2021 jo. decision No.29/Pdt.Sus/

Merek/2019/PN.Jkt.Pst was reanalyzed and identified that the form of national treatment on that decision has applied with one of kind of the national treatment principle, which is

“no less favorable treatment”, contained in

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the TRIPs Agreement and more relative than the form of “the same treatment”, thus providing the possibility for the host to provide more favorable to foreign parties, compared to citizens of the host country. This is in line with the winning of DC Comics as the party that holds the exclusive rights to the well- known mark SUPERMAN (which was registered in the United States in 1939 and in Indonesia since 1980) and making in the host country’s citizens (in this case PT.Marxing Farm Makmur) as the party which previous- ly held exclusive rights to the SUPERMAN trademark in Indonesia (before this trademark ownership conflict occurred) was in a disad- vantageous position and lost its rights to the SUPERMAN trademark.

Meanwhile, if the implementation of the national treatment principle to protect well- known marks is reviewed based on provisions in the realm of civil procedural law, which one namely, that the panel of judges can declare a lawsuit acceptable, so that the main petitum filed by DC Comics to judges panel of judex facti can be checked and processed until a decision of judges panel for resolve SUPERMAN well-known mark ownership disputes.

It means, based on the decision No.

557/K/Pdt.Sus-HKI/2021 jo. No.29/Pdt.Sus/

Merek/2019/PN.Jkt.Pst, it can be concluded that the implementation national treatment principles has been considered and been employed properly, hence the well-known mark SUPERMAN owned by DC Comics has been properly protected.

CONCLUSION

In order to protect the well-known marks, the principle of national treatment has not been explicitly regulated in the national trade-

mark legislation. However, implicitly there are several articles that in principle have been harmonized to protect well-known marks based on the principle of national treatment, including Article 76 paragraph 2; Article 77 paragraphs 1 and 2 of Law No.20/2016, and Article 18 paragraph 3 of Permenkumham No.67/2016. Moreover, decision No.1105/

Sus-Merek/2018/PN.Niaga.Jkt.Pst that reanalyzed based on the protection of intellectual property rights, the researchers viewed that both judex facti and judex juris were erro- neous in providing a decision. They ignored the provisions of Article 9 and Article 77 paragraphs 1 and 2 of Law No. 20/2016 and the type of national treatment principle used is “the same treatment”, as it seen based on the provisions of civil procedural law, then both judex facti and judex juris have given the right decision. In other words, in decision No.1105/Pdt.Sus-HKI/2018 jo. decision No.17/Pdt.Sus-Merek/2018/PN.Niaga.Jkt.

Pst the implementation of national treatment principle in protecting the well-known marks has not been implemented properly, resulting in a loss of exclusive rights to the registered well-known mark owners.

However, if decision No. 557/K/Pdt.Sus- HKI/2021 jo. decision No.29/Pdt.Sus/Mer- ek/2019/PN.Jkt.Pst is investigated based on the protection of intellectual property rights and the provisions of civil procedural law, thus the national treatment principle used is

“no less favorable treatment” and has been implemented appropriately in protecting the well-known marks. Finally, have protected the SUPERMAN trademark owned by DC Comics which is well-known mark registered.

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