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STARBUCKS REGISTERED AS A CIGARETTE TRADEMARK BY STTC
- 2021-11-08 07:53:28

PT Sumatra Tobacco Trading Company (STTC) was sued by Starbucks Corporation to the Commercial Court at the Central Jakarta District Court for making cigarettes under the Starbucks trademark.

STTC was sued by a company from the United States, Starbucks Corporation. STTC, which is a company domiciled in Pematang Siantar, North Sumatra, was sued by Starbucks Corporation because the cigarette company created a cigarette trademark named “Starbucks”.

The lawsuits filed by Starbucks Corporation include:

  1. Accept the Plaintiff's claim in its entirety.
  2. To declare that the Defendant had bad intentions when submitting the request for registration of the STARBUCKS mark No. Registration of IDM000342818 in class 34 belongs to the Defendant.
  3. Cancel the STARBUCKS mark No. Registration of IDM000342818 in class 34 belongs to the Defendant from the General Register of Marks with all the legal consequences.
  4. To declare the Plaintiff's STARBUCKS mark as a well-known mark.
  5. Ordered the Co-Defendants to submit and obey the Court's decision in this case by canceling the registration of the STARBUCKS mark No. Registration of IDM000342818 in class 34 belonging to the Defendant by crossing out the registration of the mark from the General Register of Marks and announcing it in the Official Gazette of Marks in accordance with the provisions of the applicable Mark Law.
  6. Punish the Defendant to pay the court fees that arise in this case.

Based on the Indonesian Intellectual Property Database of the Directorate General of Intellectual Property Rights of the Ministry of Law and Human Rights, STTC registered the mark on September 10, 2012, and has the trademark rights until September 10, 2022, to protect goods that are classified as Class 34, which includes:

“All kinds of cigarettes, kretek cigarettes, white cigarettes, klobot cigarettes, cigarette paper, tobacco, matches (igniter).”

It was not explained why the Ministry of Law and Human Rights accepted the Starbucks brand registered by the STTC, even though the Starbucks brand was familiar to coffee lovers.

 

LEGAL ANALYSIS:

CONCERNING INDONESIA ADOPTING THE FIRST FILE PRINCIPLE

In presenting the right to a Mark, known as First to File which is generally applied by countries with a Civil Law legal system, including Indonesia. Everyone who wishes to obtain protection for the requested Mark, must first register it with the relevant agency (in this case, the Directorate General of Intellectual Property Rights). Even the owner of a Mark who already owns a Mark that is well-known to the general public cannot obtain exclusive rights or protection for the Mark that he owns without registering it first. That is what is known as First to File.

In the First to File system, it is not known who used the Mark for the first time, although valid evidence has shown that the person used the Mark for the first time. The owner of a mark recognized in the First to File system is the party who first submits an application for registration of a mark that obtains priority rights to obtain registration of a mark and is recognized as the legal owner of a mark.

In this case, the “Starbucks” Class 34 belonging to PT Sumatra Tobacco Trading Company (STTC) has indeed been registered in the General Register of Trademarks of the Directorate General of Intellectual Property Rights since December 20, 2011, while the “Starbucks” Mark for Class 34 belonging to Starbucks Corporation has just been proposed. The first application is on 10 June 2020.

Based on the provisions stipulated in Article 3 of Law Number 20 of 2016 concerning Marks and Geographical Indications it is stated that “Rights to Marks are obtained after a Mark is registered”. In the elucidation of the article, it is stated that what is meant by “registered” is after the application has gone through a formality examination process, announcement process, and substantive examination process as well as obtaining approval from the Minister to issue a certificate.

In the provisions of Article 1 point 5 of Law Number 20 of 2016 concerning Marks and Geographical Indications it is stated that Mark Rights are exclusive rights granted by the state to registered Mark owners within a certain period of time by using their own Marks or giving permission to other third parties to use it.

CONCERNING WELL-KNOWN MARKS PROTECTION

Protection related to well-known marks globally is regulated in the Paris Convention for the Protection of Industrial Property (“Paris Convention”) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”).

Article 6 bis paragraph (1) of the Paris Convention states the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith.

In addition, Article 16 paragraph (2) of the TRIPS Agreement, confirms that in determining whether the Mark is well-known, it must take into account the knowledge of the Mark in the relevant public sector, including the knowledge of the member concerned which is obtained as a result of the promotion of the Trademark.

As we know, Starbucks Corporation is a coffee shop that has many branches and is famous not only in Indonesia, but almost all over the world. The company was founded in Seattle, United States on March 30, 1971. As of September 2020, the company had 32,660 stores in 83 countries, including 16,637 company-operated stores and 16,023 licensed stores.

In Indonesia, Starbucks Coffee, a coffee shop from the United States, opened its first outlet at Plaza Indonesia on May 17, 2002. Currently, there are hundreds or even thousands of branches spread across major cities in Indonesia, which are run by PT Mitra Adiperkasa Group.

Although the trademark “Starbucks” belonging to Starbucks Corporation to protect goods belonging to Class 34 in Indonesia was first filed on June 10, 2020. In fact, Starbucks Corporation has applied for registration of the “Starbucks” Mark in Class 30 since March 30, 2007.

As a form of Indonesia's commitment to ratify the Paris Convention and the TRIPS Agreement, the Indonesian government since 1992 has made changes or repeals of laws governing trademarks to protect well-known marks.

One form of this commitment is the addition of an article in the provisions of Article 21 paragraph 1 letter c of Law Number 20 of 2016 concerning Marks and Geographical Indications, it is stated that the application is rejected if the Mark has the same principle or entirely with a Well-known mark that is owned by other parties for different goods and/or services that fulfil.

Referring to Article 17 paragraph (2) of the Regulation of the Minister of Law and Human Rights Number 67 of 2016 concerning Mark Registration, the equality of types of goods can be determined based on the following criteria:

  1. the nature of the goods and/or services;
  2. the purpose and method of using the goods;
  3. complementarity of goods and/or services;
  4. competition of goods and/or services;
  5. channel distribution of goods and/or services;
  6. relevant consumers; or
  7. origin of goods and/or services

Thus, even though they are in different classes, with the term cross class that has been applied in the Directorate of Marks, where both Marks can be applied for registration in different classes, but if in marketing they have a close relationship and fullfil the criteria above, then the difference in the class of goods and/or services must be ignored.

CONCERNING REGISTRATION BASED ON BAD INTENTIONS

As we know from the Central Jakarta District Court Investigation Information System, one of the applications submitted by Starbucks Corporation was to request the cancellation of the Class 34 “Starbucks” Mark belonging to PT Sumatra Tobacco Trading Company (STTC) on the basis of bad intention.

Based on the provisions of Article 21 paragraph (3) of Law no. 20 of 2016 concerning Marks and Geographical Indications, it is stated that: “An application is rejected if it is submitted by an applicant with bad intentions”.

Furthermore, it is explained in the Elucidation of Article 21 paragraph (3) of Law no. 20 of 2016 concerning Marks and Geographical Indications, which states that :

“Applicant with bad faith” is referred to as an Applicant who is reasonably suspected of registering their Mark with an intention to imitate, plagiarize, or follow other parties' Mark for their business interests to cause unfair business competition, deceive, or mislead consumers.

For example, an Application of a Mark in the form of writing, painting, logo, or color arrangement is the same as a Mark that is owned by another party or a Mark that has been known to the general public l for many years, is imitated in such a way that it has substantial similarities or in its entirety with the wellknown Mark. From these examples, there has been bad faith from the Applicant because at least it should be noted that there is an element of willfulness in imitating the well-known Mark.”

For this reason, in proving the registration of the “Starbucks” Mark on the basis of bad faith by STTC, it is necessary to prove that there is a close relationship between the STTC “Starbucks” Mark and Starbucks Corporation, for example imitation, market taking, or driving the famous Starbucks Corporation Mark which results in harm to the public.

CONCERNING CANCELLATION OF MARKS THROUGH COMMERCIAL COURT CLAIMS

Based on the provisions of Article 76 paragraph (1) of Law no. 20 of 2016 concerning Marks and Geographical Indications, it is stated that a lawsuit for the cancellation of a Mark can be filed by an interested party based on the reasons provided for in this Law. In the explanation it is stated that the interested parties include registered Mark owners, prosecutors, foundations/institutions in the consumer sector, and religious assemblies/institutions.

In the provisions of Article 76 paragraph (2) of Law no. 20 of 2016 concerning Marks and Geographical Indications, it is stated that owners of unregistered Marks can file a lawsuit after submitting an application for Mark registration.

In this case, even though Starbucks Corporation does not have a registered Mark in Class 34, but with the application for registration of the “Starbucks” Mark in Class 34 and registered Marks in other classes belonging to Starbucks Corporation, Starbucks Corporation has sufficient legal standing to file lawsuit for the cancellation of STTC's “Starbucks” Mark in Class 34.

In addition, based on the provisions of Article 77 paragraph (1) of Law No. 20 of 2016 concerning Marks and Geographical Indications, it is stated that the grace period for filing a lawsuit for the cancellation of a Mark is no later than 5 (five) years from the date of registration of the Mark for which the cancellation will be filed.

As we know, the STTC “Starbucks” Mark in Class 34 has been registered since November 20, 2011, meaning that Starbucks Corporation has passed the application period, which is more than 5 (five) years from the date of registration of “Starbucks” owned by STTC in Class 34.

However, according to the provisions of Article 77 paragraph (2) of Law no. 20 of 2016 concerning Marks and Geographical Indications provides space for the cancellation of marks indefinitely if there is an element of bad faith and/or the relevant Mark is contrary to state ideology, laws and regulations, morality, religion, decency, and public order.

Thus, as long as Starbucks can prove that there is an element of bad faith in the registration of the Class 34 STTC “Starbucks” Mark, the period of filing a lawsuit of 5 (five) years can be waived.

CONCERNING ALTERNATIVE DISPUTE SETTLEMENT

In addition, the disputing parties, namely Starbucks Corporation and STTC, may seek an out-of-court settlement, as the Trademark Law also recognizes the transfer and/or licensing of rights to the Mark.

As we know, in the provisions of Article 41 paragraph (1) of Law no. 20 of 2016 concerning Marks and Geographical Indications, it is stated that Registered Mark Rights may be transferred or transferred due to: inheritance; testament; waqf; grant;  agreement; or other reasons which are justified by laws and regulations.

Based on this rule, it is possible for both parties to reconciliation by entering into a sale and purchase agreement of rights to a Mark or granting rights to a Mark based on a grant.

Alternatively, reconciliation can also be carried out through the granting of permits as referred to in Article 42 paragraph (1) of Law no. 20 of 2016 concerning Marks and Geographical Indications, which stipulates that the owner of a registered mark may grant a license to another party to use the Mark, either in part or in whole of goods and/or services. The license in question is a license granted by the owner of a registered Mark to another party based on a written agreement in accordance with the laws and regulations to use a registered Mark.

SOURCES :

Undang-Undang No. 15 Tahun 2001 Tentang Merek.

Undang-Undang No. 20 Tahun 2016 Tentang Merek dan Indikasi Geografis.

Peraturan Menteri Hukum dan HAM RI No. 67 Tahun 2016 Tentang Pendaftaran Merek.

Lionita Putri Lobo, Indirani Wauran. 2021. Kedudukan Istimewa Merek Terkenal (Asing) Dalam Hukum Merek Indonesia. Masalah-masalah Hukum, Jilid 50 No. 1, Januari 2021, halaman 71-72.

https://news.detik.com/berita/d-5681035/selain-digugat-starbucks-perusahaan-rokok-sttc-juga-pernah-digugat-harley

https://www.hukumonline.com/klinik/detail/ulasan/cl5892/merek-terkenal-yang-tidak-terdaftar/

http://sipp.pn-jakartapusat.go.id/index.php/detil_perkara

https://en.wikipedia.org/wiki/Starbucks

https://elib.unikom.ac.id/files/disk1/704/jbptunikompp-gdl-feniaamali-35187-1-unikom_f-i.pdf



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