Registered trademark Dr. Hautscka on behalf Muchtar in Indonesia makes Wala Heilmittel GmbH (Wala) company domiciled in Germany angry. As a matter of fact, Dr. Hautscka have been introduced and promoted all over the world and a lot of people who use skin care product know this trademark.

Unfortunately, Dr. Hautscka trademark owned by Wala Helmittel GmbH (Wala) registered in Indonesia on August 9, 2012 in class 5 with registration number IDM000364895, which is to protect the pharmaceutical and medical grade and in class 21 with registration number IDM000372552, which is the item are cosmetic items, toothpicks, dental floss, and toothbrush. Whereas in grade 3, Muchtar has registered Dr. Hautscka trademark beforehand, so that the application of Dr. Hautscka trademark owned by Wala Helmittel GmbH (Wala) is rejected by the Directorate General of IPR. Wala Heilmittel GmbH (Wala) filed an application with the Agenda number is D002011013230 and D002013005872.

Wala suspect bad faith in the registration proposed by Muchtar, he wanted to follow the famous trademark of Dr. Hautscka which is the product from Wala. Whereas, the name of Dr. Hautscka comes from the inventor and company founder Wala, Dr. Rudolf Hautscka, one of the chemist born in wina. after Hautscka met with Rudolf Steiner, Dr. Hautscka established his laboratory known as Wala. (Source : Hukumonline, 21 August 2013)

Wala Helmittel GmbH (Wala) submit trademark lawsuit to Dr. Hautscka owned by Muchtar through their attorney Ali Imron, because the trademark owned by Muchtar exactly the same with the trademarks owned by Wala. as quoted in Bisnis.com dated 16 September 2013, according to Ali Imron, the trademark and logo of his clients logo copied exactly and the difference between is the opponent placed the logo above the text of Dr. Hautscka whereas the original trademark logo is placed below the text or stands alone.

In this case, of course the lawsuit is based on the alleged of bad faith in accordance with article 4 Act No. 15 of 2001 about trademark that emphatically states: "trademark can not be registered on the basis of the petition filed by the applicant who have bad faith".

Not only opposed with Article 6, paragraph (3) letter a Trademark Law, Trademark Dr. Hauschka owned by Muchtar totally different with the trademark owned by Wala. This similarity allegedly violated Article 6, paragraph (1) letter a and b, as well as the Trademark Act Section 4. No.. 15 of 2001 regarding Mark clearly mention: "The application should be rejected by the directorate general if the trademark" :

1. Have equality substantially or wholly with the trademark owned by other parties that has been registered earlier in similiar goods and / or services.
2. Have equality substantially or wholly with well-known trademark owned by other parties in similiar goods and / or services.

Muchtar parties can use the first to file principles as the first applicants to file in Indonesia and certainly the evidence that has been intensively promoted.

Currently the trial has been up on the agenda is the answer of the defendant Muchtar, but he did not attend the hearing, so the trial resumed on 28 August 2013.

Source : Hukum Online, bisnis.com, kontanonline.com

Legal Analysis

Currently in world trade, the trademark has become an inseparable part because the trademark has an important role as the identity of a product. through trademark, public as consumers will easily recognize a specific company's product.

In the case that mentioned above, Wala Heilmittel GmbH (Wala) as the owner of the rights to the trademark Dr. Hautscka pursuant to Article 3 of Act No. 15 of 2001 Regarding trademark has the exclusive right to authorize or prohibit others to use trademarks that have similar substantially or the whole with his own trademark.

Wala Heilmittel GmbH (Wala) as the first registrant must strongly object if any other party's use and / or apply for registration of the mark that having a similar substantially or the whole with his Dr. Hautscka trademark.

Based on Article 1 point 1 of Act No 15 of 2001 of trademark, trademark is a sign of the image, name, word, letters, figures, composition of colors, or a combination of these elements, having distinguishing features and used in trading activities of goods or services. In this case the equation can be analyzed in principle between the logo Wala Heilmittel GmbH (Wala) with Muchtar logos are placed on the writings of Dr. Hauschka whereas the original trademark logo Wala Heilmittel GmbH (Wala) was placed under the heading or stand alone.

In this case the claim is based on allegations of bad faith in accordance with Article 4 of Act No. 15 of 2001 on trademarks that firmly says: "Trademark can not be registered based on an application filed by the Applicant that have bad faith".

The lawsuit can also use the provisions of Article 6, paragraph (1) items a and b, of Law No. 15 of 2001 of Trademark that clearly states: "The application should be rejected by the Directorate-General if the Trademark":

1. Have equality in principle or wholly with Trademark that owned by another party that have been registered earlier for goods and / or services that similar.
2. a.Have equality in principle or wholly with well-known Trademark for goods and / or services that similar.

On Muchtar side as the defendant, He can use First principle as the registrant to file first in Indonesia and certainly evidence that the trademark has been intensively conducted promotion, By using the principle of territorial and Constitutive principles in trademark protection in Indonesia that is the protection of the trademarks applies per state (territorial) given upon request by the Owner Trademarks (Muchtar).

As well as questioning of Muchtar side, Wala Heilmittel GmbH (Wala) that proposed the trademark in 2013, while they already claimed that the trademark has been introduced and promoted in all over the world.

If Wala Heilmittel GmbH (Wala) Trademark in Indonesia registering with priority rights its certainly not cause disputes such as this, as the Article 11 of Act No. 15 in 2001, that: "Application with a Priority Right shall be filed within a period of 6 (six) months from the date of receipt of the application for registration for the first accepted in other countries, which are members of the Paris Convention for the Protection of Industrial Property or members of Agreement Establishing the World Trade Organization."

If in that lawsuit Wala Heilmittel GmbH (Wala) claimed trademark Dr. Hautscka is a popular trademark, it must be able to meet some of the legal basis relating to the well-known trademark and not only mention that the trademark has been registered in several countries, because by only have the trademark registered in some countries can not prove that the trademark is a well-known trademark.

That the provisions of Article 6, paragraph (1) letter b of Act No. 15 of 2001 of Trademarks, the terms of which are described in the explanation of Article 6, paragraph (1) letter b of Act No. 15 of 2001, among others :

1. Has been known by the public ;
2. Has earned a reputation as a well-known trademark by a vigorous and massive campaign;
3. Has proof of investments in several countries in the world conducted by the owner; and
4. a.Already have evidence of the trademark registration in several countries.

Some Jurisprudence also mentions some criteria of famous Trademark such as the Supreme Court jurisprudence No 1486/K/1991 dated 25 November 1995 that mentions "The famous Trademark is if a Trademark has been circulated out of the regional boundaries to the limits of transnational, which has been circulated out their home countries and proven by the existence of registration of that relevant Trademark in various countries�. Supreme Court Jurisprudence No. 022 K/HaKI/2002 states: "In order to determine the criteria for well-known trademarks, the Supreme Court orienting to the jurisprudence of the Supreme Court of, which is not only based on general knowledge of the community, its determination is also based on the reputation of the trademark that has been obtained because the promotion has been done by the owner, accompanied with the evidence of trademark registration in some countries, if its exists, is one of the powerful tools of proof".

Well-known trademarks criteria beside of Article 6, paragraph (1) letter b of Act No. 15 of 2001 of Trademark : Famous Trademark Criteria Based on the WIPO (World Intellectual Property Organization) which is The use the old trademark, according to WIPO in order a trademark can be considered as a well-known trademark and the promotional usage takes quite a long and considerable costs, such as Coca Cola, it took almost 100 years, Toyota would take 30 years, and Mc'Donald it takes 40 years continuously used and promoted on a large scale, has a high reputation and yet has excellent quality assurance whereas the criteria is based on principles of well-known trademarks Reprositas In Paris Convention in accordance with Article 6, paragraph 2 of the Paris Convention which was one of his principles Reprositas Principles, Principle Reprositas in this case meant the reciprocal relationship between member countries of the Paris Convention. Famous Trademark owners are not only demanding that the Trademark is recognized by the State, but as the owner of trademarks who think Trademark is Famous Trademarks should also make a significant contribution to the country, which include the distribution and marketing of products with the Famous Trademarks is high enough to be able bring in a real income for the state in the Famous Trademark protected.

An evidence of Trademark Register in some countries of the world does not necessarily prove that the trademark is Famous Trademark. "Although the trademark has been registered in several countries, its not ensure the trademark is known. Trademark registration is a requirement only for the well-known trademark but not the dominant factor." wrote attorney of Good Food, Melia Wijaya, in the answer file of legal case process between PT Good Food Indonesia with PT Forisa Nusapersada against the seizure of the trademark "POP DRING", as quoted in hukumonline.com dated July 31, 2013.