Trademark rights are exclusive rights granted by the state to the registered trademark owner for a certain period by using the trademark itself or giving permission to other parties. The other party will own all of the rights in the transferred trademark. However, Indonesian trademark law only allows the same party to receive that transferred trademark right. So, what are the legal consequences if two parties or more are receiving the transfer rightof the trademark? Here is the full article.
Example from a Related Case
In 2022, a well-known fashion brand that produces various models of clothing inspired by the sport of polo as its design theme, Polo Ralph Laurent, experienced a trademark dispute between its trademark holders.
The case began when an Indonesian trademark holder named Mr. Mohindar H.B. claimed to have obtained the rights to the POLO RALPH LAURENT trademark and the Logo of the Horseman register No. 173934 by purchasing from Mr. John Whiteley underhand on March 3, 1986. He also registered the rights transfer with the Directorate of Patents and Copyrights on October 1, 1986. He then sued PT POLO RALPH LAUREN INDONESIA (PRLI) for using the mark POLORALPHLAURENT as its trademark for the same type of goods.
However, it was found that John Whiteley also sold the trademark to another party, PT Manggala Putra Perkasa (MPP), in front of a Notary. But Mr. Mohindar buys it by the Under Hand Deed and PT Manggala Putra Perkasa by Notarial Deed.
Mr. Mohindar H.B., as a plaintiff, is declared the rightful owner of the trademark because he is the first party who bought the trademark from Mr. John Whiteley, wherein the transfer of trademark rights is not questioned in the form of a sale and the underhand deed or notarial deed. Still, the priority is who first bought it as the decision Number 436/Pdt. G.D./1993/PN JKT PST juncto Number 1776 K/Pdt/1996.
So, the judge stated that PT Manggala Putra Perkasa is not entitled to the POLOBYRALPHLAUREN trademark and the Logo of People Riding Horses owned by Mr. Mohindar.
The transfer right of the POLORALPHLAUREN trademark or the Logo of People Riding Horses Playing Polo, which has similarities in essence with the POLOBYRALPHLAUREN mark and the Logo of People Riding Horses owned by Mr. Mohindar H.B., from PT Manggala Putra Perkasa to P.T. Polo Ralph Lauren Indonesia, on March 7, 2016, on Number 52727 is also considered invalid.
In the end, Mr. Mohindar won the case. However, this dispute will still develop to a further stage because it was found that some of the court documents Mr. Mohindar used were fake, especially records regarding ownership evidence of the Trademark.
It is known that the trademark certificate “POLO BY RALPH LAUREN” No. 173934, which Mr. Mohindar HB always uses, does not match the official records of the Directorate of Copyright, Patents and Trademarks and does not match the Decision of the Central Jakarta Commercial Court Number: 140/Pdt. G/1995 PN Jkt Pst in 1995 where it was revealed the fact that the registered Trademark is “RALPH LAUREN” not “POLO BY RALPH LAUREN”, so without the word “POLO” and “BY” as always used by Mr. Mohindar HB and the Court also ordered to be removed in 1995, as reinforced by the decision of the Cassation in 2001 with decision number: 3101 K/Pdt/1999. However, Mr. Mohindar HB knowingly and willfully continued to use the false certificate of the POLO BY RALPH LAUREN mark in suing the PT MPP Group in 2022.
From the dispute case, several important points must be considered by business actors, including:
- Do not transfer the registered trademark to different parties. As explained in Article 41, paragraph 2 of Law No. 20 Year 2016 on Trademarks and Geographical Indications, which reads: “The transfer of rights to a registered trademark by a trademark owner who has more than one registered trademark that has similarities in essence or its entirety for similar goods and/or services can only be done if all registered trademarks are transferred to the same party.”
- The principle of trademark law recognizes the first-to-file principle.This means that the trademark holder will be recognized as the party who first registered the trademark legally. This principle is not written directly in the MIG Act, but it is stated that Indonesia adheres to the constitutive system in protecting its trademark. As a country that attaches to the constitutive system, of course, the party to be protected is the one who first registered the trademark to the DJKI.
- Legal Power of Notarial Deed and Underhand Deed. In the transfer of trademark rights, the form of sale and purchase is under the hand or notarial deed, but the priority is who first bought it. However, the evidentiary power possessed by the Under Hand Deed is less strong than the Authentic Deed because an authorized official makes the authentic deed.
- Examination of Document Authenticity. In this case, it was alleged that the documents provided by the Plaintiff, Mr. Mohindar, were forged and that the brand mafia assisted him in acting. This case can happen because the documents submitted for evidence in court are only copies and not the original documents. This certainly makes us realize that, in practice, we still have to fight for our legal rights until the facts are revealed. So, it is essential to choose an advocate who is painstaking and has good practicing hours so that his knowledge covers legal theory and practice.
Thus, these are the case reviews of the Polo Ralph Laurent trademark dispute between its trademark rights holders in Indonesia.
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