Lots of Trademarks are registered at the Directorate General of Intellectual Property Rights proves that more and more people of Indonesia and especially the entrepreneurs are aware of the importance of registering the Trademark of their goods and or services. However, it is also a negative effect, ie the more brands that hijacking the good name and fame of the Trademark owned by the other party for its own benefit.

One of the trademark dispute case is a dispute between manufacturers drinks from Virginia, USA, Multi Access Limited and businessmen from Indonesia, Dhalim Soekadanu feuding over herbal tea Trademark "Wong Lao Ji" itself.

Multi Access Limited find that Wong Lao Ji herbal tea Trademark has been imitated by Wong Lao Ji herbal tea belongs to Dhalim Soekadanu, because herbal teas owned by Dhalim have similarities principally by the Trademark, either from the use of letters, spelling and its sound. Wong Lao Ji Trademark owned by Dhalim also use the same Chinese characters with the Trademark that belonging to the Multi Access Limited who registered it first. Whereas the domestic Trademark registration should use Indonesian, not a foreign language (source: Liputan6.com)

Bad faith, according to the Multi Access Limited, carried out by Wong Lao Ji Trademark registeration owned by Dhalim, because Wong lao Ji Trademark owned by Multi Access Limited has been well-known in advance. Wong Lao Ji Trademark owned by Multi Access Limited was first registered in several countries and won several awards, besides the Multi Access Limited also has conducted a massive campaign in Lao Ji Wong brands, so they feel that Wong Lao Ji is a well-known brand which are well known in many countries.

The suit over the cancellation of Wong Lao Ji Trademark owned by Dhalim Soekadanu filed by Multi Access Limited to the Central Jakarta Commercial Court, the judges also granted all the claim to cancel the Wong Lao Ji Trademarks owned by Dhalim Soekadanu registered in classes 5 and 32 with Register Number IDM000296487 since March 7, 2011, with the consideration that Dhalim has bad faith to hijacking Wong Lao Ji trademark belong to Multi Access is already well known in advance because there are similarities in principle with Wong Lao Ji trademark belong to Multi Access Limited.

In the suit number 51 / Pdt.Sus/Merek/2013/PN.Niaga.Jkt. Pst, Multi Access Limited said that Wong Lao Ji Herbal Tea was first discovered by Wang Zebang in China in 1821. Then later, the trademark has been registered in Hong Kong. The first registration December 29, 1897 with registration number 18970189 in the class of goods 5. The second registration is also held in Hong Kong with the number 19410124 in grade 5 (source: bisnis.com)

News source: Liputan6.com, bisnis.com

Law Analytical

Trademak is mark in the form of images, names, words, letters, figures, composition of colors, or a combination of these elements, having distinguishing features and used in the trading of goods or services (Article 1 paragraph 1 of Law No 15 2001 on Trademark). Trademark Registration System adopted in Indonesia is a first to file system in the sense that the person who first filed the trademark registration of the Trademark was that it reserves the right to get the Trademark Register.

In the above cases, the judges decide in favor of the Multi Access Limited to fully take in consideration that the Wong Lao Ji Trademark belongs to Dhalim did have a bad faith for hijacking Wong Lao Ji Trademark belong to Multi Access Limited because the Trademark owned by Dhalim have equations in substantially by Wong Lao Ji who belongs to the Multi Access Limited, it can be viewed from the equation of words and letters, in which Wong Lao Ji is written in a China script and so with Wong Lao Ji Trademark owned by Dhalim which also uses China script, besides the equation of the pronunciation and the sound is also the reason the judges of the Commercial Court Central Jakarta to cancel Wong Lao Ji Trademark owned by Dhalim.

As mentioned in Article 6 paragraph (1) letter a and b the Trademark Law, the Wong Lao Ji Trademark owned by Dhalim has met the elements mentioned in Article 6. The sound of the article is:

Article 6 :

The application shall be rejected by the Directorate-General if the Trademark:

1. Similarity in its Essential Part or entirely owned by another party trademarks that have been registered in advance for goods and/or services of that kind;
2. Similarity in its Essential Part or entirely with well-known trademarks owned by other parties for goods and/or for that kind.

If seen from Article 6 paragraph (1) letter a in Trademark Law, it can be proved that the Multi Access Limited is the the first which registered Wong Lao Ji Trademark. He registered his first Trademark in 1897 in Hong Kong. Furthermore, they also register the trademark in various countries, such as Australia, Canada, France, Japan, Singapore, UK, USA, and Indonesia.

In 1991, Wong Lao Ji Trademark formerly known as Wong Lao Kat Trademark registered in Indonesia, but after 2005 the Trademark was transferred to the Multi Access Limited. This is a proof that the Trademark belongs to Wong Lao Ji Multi Access had already been registered, while the proprietary Trademark owned by Dhalim registered later in 2011. Thus, Lao Ji Wong Trademarks owned by Dhalim comply with Article 6 paragraph (1) letter a is to have equality in principle or in similarity with another party brands that had already been registered.

Furthermore, in Article 6 paragraph (1) letter b said that a brand must be rejected if it has similarities with well-known brands that are owned by other parties for goods and / or the like. Multi Access Limited said that the mark is a well-known brand, because the prescription of the brand has been around since 1821 and since then has become a popular in mainland China.

Multi Access Limited said that it had carried out a massive campaign of top brands Wong Lao Ji. Wong Lao Ji trademark registration that has been registered in several countries also proves that the brand is already "go international" or has penetrated to the overseas market. Awards obtained by Wong Lao Ji owned by Multi Access Limited also prove that this brand has been recognized by the community.

Criteria known trademark among others mentioned In the explanation of Article 6 (b) of Act No. 15 Year 2001, which is :

1. General knowledge of the community for the trademark
2. Famous trademark acquired a reputation as a vigorous campaign and massive
3. Investing in some countries in the world by the trademark owner
4. Proof of registration of the trademark in some countries

Seen from the description of Article 6 paragraph (1) letter b, then the Wong Lao Ji Trademarks belong to the Multi Access Limited can be said as a famous brand. Other evidence is that if we look for the word "Wong Lao Ji" in Internet search, it will come out Wong Lao Ji or commonly referred to as Wong Lao Kat herbal tea as the most famous Trademark in the Chinese mainland, it is proved that the "Wong Lao Ji" Trademark is a Trademark that is well known by the public.

From some of these points, we can know that the reason for the judges in favor of the Multi Access Limited to cancel the registration of Wong Lao Ji Trademark owned by Dhalim Soekadanu accordance with the legislation in force. Because Wong Lao Ji herbal tea Trademark owned Dhalim Soekadanu has shown to have a bad faith by hijacking the fame of Wong Lao Ji Trademark who has been famous long before that is owned by Multi Access Limited.