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“GEPREK BENSU” TRADEMARK CASE CONTINUES TO STATE ADMINISTRATIVE LAWSUIT
- 2021-11-08 07:50:18

The dispute over the Geprek Bensu trade mark has entered a new phase. Benny Sujono, who owns the “I am Geprek Bensu” trade mark, has filed a State Administration lawsuit against the Director General of Intellectual Property (KI) of the Ministry of Law and Human Rights of the Republic of Indonesia (Kemenkumham) through the Jakarta State Administrative Court.

The lawsuit was made by Benny Sujono because the Director General of IP was considered to have issued a letter to delete registered trademarks, owned by PT Ayam Geprek Benny Sujono and Yangcent. According to them, the Director General of Intellectual Property Rights should not issue a letter of deletion of the mark. In fact, their party has won the decision of the Trademark dispute trial at the Supreme Court (MA).

“We deeply regret the actions of the Director General who were unprofessional, seemed intentional, arbitrarily abused the power to delete our client's registered trademarks.” said Eddie Kusuma, who is Benny Sujono's attorney, quoted from Tribunnews, Saturday (17/10/2020).

“In fact, this is the advantage of acting beyond the authority to delete our client's registered trademarks which are already legal and have permanent legal force in the Supreme Court's decision.”,  he said.

 

LEGAL ANALYSIS

The dispute over the Geprek Bensu trade mark has come a long way. It is known from the Supreme Court Decision Directory data, the beginning of this dispute began with a dispute over the name “BENSU” which is considered an abbreviation of the name of a famous artist, namely “RUBEN ONSU”, for the business owned by PT AYAM GEPREK BENNY SUJONO, et al., under the name I AM GEPREK BENSU, where at that time it was known that the two GEPREK BENSU Marks, both owned by RUBEN ONSU and PT AYAM GEPREK BENNY SUJONO, had not been registered in the General Register of Trademarks.

 

In the West Jakarta District Court Decision dated February 18, 2019, one of the decision stated that PT AYAM GEPREK BENNY SUJONO, et al were declared to have committed an unlawful act and sentenced him to change the name “BENSU” to another name that did not have the same pronunciation or similarity in the sentence. the main thing is. However, at the level of appeal in this case, the decision stated that it is unacceptable, because the District Court does not have the authority to hear cases that qualify as trademark disputes which are the authority of the Commercial Court.

 

Furthermore, it is also known that RUBEN ONSU filed a lawsuit for the cancellation of Jessy Handalim's “BENSU” trade mark which is the name of a milk shop around the city of Bandung. From the lawsuit filed by RUBEN ONSU, it is known that the main basis for the lawsuit because RUBEN ONSU as applicant for the “GEPREK BENSU” trademarks received a Rejection Proposal from the Directorate of Marks, because there is the trade mark with the name “BENSU” which has been registered in the general register of marks from the Directorate of Marks, namely the “BENSU” trade mark belonging to JESSY HANDALIM.

The dispute over the “BENSU” trademark between RUBEN ONSU and JESSY HANDALIM under case register No. 48/Pdt.Sus-Merek/2018/PN.Niaga.Jkt.Pst., in its decision it was stated that the lawsuit filed by RUBEN ONSU was rejected, because the “BENSU” Mark belonging to JESSY HANDALIM is considered to have been registered beforehand and is protected based on the First to First principle.

However, based on data from the Intellectual Property Database (PDKI), The trademark “BENSU” owned by JESSY HANDALIM was transferred of rights to RUBEN SAMUEL ONSU, from media reports RUBEN SAMUEL ONSU and JESSY HANDALIM made reconciliation out of court by buying JESSY HANDALIM “BENSU” Mark.

It did not stop there, then the Mark Cancellation Lawsuit case No. 57/Pdt.Sus-Merek/2019/PN.Niaga.Jkt.Pst at the Commercial Court at the Central Jakarta District Court between RUBEN ONSU and PT. AYAM GEPREK BENNY SUJONO, et al. From the lawsuit filed by RUBEN ONSU, it can be seen that he did not accept the decision of the Directorate of Marks to decide registered of “GEPREK BENSU” Marks belonging to RUBEN ONSU and PT. AYAM GEPREK BENNY SUJONO, et al., after RUBEN ONSU transferred the rights to the trademark “BENSU” owned by JESSY HANDALIM. On the other hand, PT. AYAM GEPREK BENNY SUJONO, et al. filed a counterclaim lawsuit on the basis of the brand “GEPREK BENSU” owned by PT. AYAM GEPREK BENNY SUJONO, et al. first registered and protected under the First to File principle than the “GEPREK BENSU” Mark owned by RUBEN ONSU, and the “BENSU” Mark transferred by RUBEN ONSU from JESSY HANDALIM has nothing to do with the disputed “GEPREK BENSU” Mark.

The end of the decision on the case of the Mark Cancellation Lawsuit case No. 57/Pdt.Sus-Merek/2019/PN.Niaga.Jkt.Pst in the Commercial Court at the Central Jakarta District Court until the final stage upheld the decision, with the decision stating that PT. AYAM GEPREK BENNY SUJONO, et al. as the first legal owner and user of the “I AM GEPREK BENSU + LUKISAN” Mark, and declares to cancel 6 (six) RUBEN ONSU's “GEPREK BENSU” Mark Etiquette for Class 43, because it has similarities in principle with the “I AM GEPREK BENSU” Mark + LUKISAN” owned by PT. AYAM GEPREK BENNY SUJONO, et al and is or resembles the name of a legal entity PT. AYAM GEPREK BENNY SUJONO.

 

However, the Directorate of Marks set aside the contents of the decision of the Commercial Court, and acted otherwise by deletion of the “I AM GEPREK BENSU” Marks belonging to PT. AYAM GEPREK BENNY SUJONO, et al. The Directorate of Marks was deleted the “I AM GEPREK BENSU” Marks belonging to PT. AYAM GEPREK BENNY SUJONO with its rights under the Trademark Law for deletion of marks on the Initiative of the Minister.

Currently, the PT. AYAM GEPREK BENNY SUJONO, et al. is filing a Lawsuit by the State Administrative Court to the Directorate General of Intellectual Property Rights for its objection to the decision.

 

CONCERNING DELETION OF REGISTERED MARKS AT THE INITIATIVE OF THE MINISTER

 

Whereas in Article 72 paragraph (6) of Law Number 20 of 2016 concerning Marks and Geographical Indications (“Trade Mark Law”), it is stated that the deletion of marks can be carried out on the initiative of the minister. Furthermore, paragraph (7) states that the deletion of a trademark on the initiative of the minister can be carried out if:

 

  1. Has similarities in principle and/or in its entirety with Geographical Indications;
  2. Contrary to state ideology, laws and regulations, morality, religion, decency, and simplicity; or
  3. Have similarities in their entirety with traditional cultural expressions, intangible cultural heritage, or names or logos that have been passed down from generation to generation.

In the event that the deletion of a registered Mark on the initiative of the Minister may be carried out after obtaining a recommendation from the Mark Appeal Commission, upon prior request from the Minister of Law and Human Rights of the Republic of Indonesia.

In Article 73, it is stated that an objection to the deletion of a registered Mark on the initiative of the Minister can be made by the Mark Owner by filing a lawsuit through the State Administrative Court.

In this case, if the “I AM GEPREK BENSU + LUKISAN” Marks belonging to PT. AYAM GEPREK BENNY SUJONO, et al. it is true that the deletion was carried out on the initiative of the Minister, meaning that PT. AYAM GEPREK BENNY SUJONO, et al. has been correct to take legal action through the State Administrative Court.

However, it is necessary to know that the formal requirements for filing a lawsuit against the Administrative Court are as regulated in Law Number 5 of 1986 concerning the State Administrative Court as amended by Law Number 9 of 2004 concerning Amendments to Law Number 5 of 1986 concerning the Administrative Court. State and lastly amended by Law Number 51 of 2009 concerning the Second Amendment to Law Number 5 of 1986 concerning the State Administrative Court (“PTUN Law”), in Article 55 which states that a lawsuit can be filed only within a period of ninety days from the time of receipt or announcement of the decision of the state administrative agency or official. For the party whose name is mentioned in the State Administrative Decree that is being sued, the ninety days grace period is calculated from the day the decision of the State Administration that is being sued is received.

Referring to Article 72 paragraph (7) regarding the reasons for the deletion of a registered Mark on the initiative of the minister, and notice the decision of the Supreme Court with permanent legal force which in one of its decision states the “GEPREK BENSU” Mark belonging to RUBEN ONSU and PT. AYAM GEPREK BENNY SUJONO, et al. basically have similarities, then it should be if the Minister/Commission on Appeals in its recommendation decides to delete the “I AM GEPREK BENSU” Marks owned by PT. AYAM GEPREK BENNY SUJONO, et al., the same thing must also be done to the “GEPREK BENSU” Marks belonging to RUBEN ONSU, considering the legal principles adopted in the 1945 Constitution, namely Equity Before the Law or equality before the law, especially the Directorate Marks pursuant to a Commercial Court Decision are ordered to strike out the “GEPREK BENSU” Marks belonging to RUBEN ONSU in Class 43 from the General Register of Marks.

However, as of the writing of this article, the reasons and considerations for the Directorate of Trademarks for deleting the “I AM GEPREK BENSU” Marks belonging to PT. AYAM GEPREK BENNY SUJONO, et al. Further explanation will be given after the State Administrative Court gives a final and binding decision on this matter.

Sources:

Masnun, Muh. Ali Masnun & Pratama, Radhyca Nanda. (2020). Analisis Penghapusan Merek Terdaftar Atas Prakarsa Menteri Karena Bertentangan Dengan Peraturan Perundang-Undangan. Jurnal IUS Kajian Hukum dan Keadialan. Vol. 8 No. 3, Desember 2020.

 

Undang-Undang Nomor 20 Tahun 2016 tentang Merek dan Indikasi Geografis.

 

Undang-Undang Nomor 5 Tahun 1986 Tentang Pengadilan Tata Usaha Negara sebagaimana telah diubah dengan Undang-Undang Nomor 9 Tahun 2004 tentang Perubahan atas Undang-Undang Nomor 5 Tahun 1986 Tentang Pengadilan Tata Usaha Negara dan terakhir kali diubah dengan Undang-Undang Nomor 51 Tahun 2009 Tentang Perubahan Kedua atas Undang-Undang Nomor 5 Tahun 1986 Tentang Pengadilan Tata Usaha Negara.

 

Artikel yang telah tayang di Kompas.com dengan judul “Babak Baru Sengketa Perebutan Merek Geprek Bensu”, dengan link:

 https://money.kompas.com/read/2020/10/17/060625826/babak-baru-sengketa-perebutan-merek-geprek-bensu?page=all.



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