24 Jan 2020
Tim Slingschröder
Trademarks can be designed in bright colors, but when it comes to their legal protection intellectual property consultants often file applications for registration containing their black-and-white versions. Why do consultants choose for this approach?
A trademark enjoys protection as to how it is recorded in its registration. A mark being really similar to the registered trademark will almost certainly be rejected by the Indonesian Directorate General of Intellectual Property (DGIP). But the more different this similar trademark is from the registered trademark in question, the larger chances are the DGIP and judicial power allows for the use – and trademark registration indonesia – of this similar trademark by third parties. Logically, relatively simple trademarks already change considerably when colors are changed, as they simply contain less distinctive shape elements. Having such marks registered in black-and-white therefore is not recommended, as others could still use and claim any colored version of the mark in this case. An exception to this rule is of course if the colors of the mark as used in daily trade are black-and-white as well.
A second circumstance under which registration of a trademark in color is preferable is when the mark’s colors are a vital part of it. MAC DONALD’S’ typical ‘M’ for example wouldn’t be the same without its yellow color and red background. Likewise, the light blue color of TWITTER is an essential feature of its famous bird logo. The same principle goes for lesser-known, local marks as well; if its user holds the opinion the mark’s colors are at least as important as its shapes, it is advisable to file an application for registration including the colored version of the logo.
More complex marks will still be recognizable as such when altering their colors. Registration of the trademark in black-and-white is, therefore, less risky as compared to doing so with simple marks – but is it beneficial? In some cases, it is. Though the large majority of registered trademarks never end up as the subject of a court trial about infringement, judges generally see a black-and-white trademark as a ‘base-mark’. This implies any colored varieties of the same mark will be regarded as being the same mark, and therefore fall under the scope of legal protection as well. This is, however, a general rule of thumb; jurisprudence in Indonesia does not offer the level of security it does in many western jurisdictions.
With this knowledge in mind, it makes sense trademark users who have serious plans to change the colors of their marks best choose for registration of the mark in black-and-white. Applicants intending to market their trademark in multiple colors may choose for this approach as well, though of course there’s always the option of filing multiple applications for each colored version of the trademark.
Along with the actual sample of the trademark, a description of its colors should also be included in an application for trademark registration. An unwritten rule is that the colors described are often the most basic ones. Letters in navy blue, for example, are simply being described as ‘blue’, or ‘dark blue’ if a mark contains many varieties of blue. Every now and then it is debatable what color a certain element of the mark has. Turquoise is an often-seen example; while some people may argue it leans towards green, others could think it’s a variety of blue. Likewise, dark blue and purple are easily mistaken for one another.
read also : The importance of registering trademark in Indonesia
Your Trademark is the face of your products or services. Besides distinguishing your flash-disks, fruit-snacks or video editing services from those of your competitors, a Trademark in itself can also become a valuable asset. Read here what we will need to make your Mark truly yours.
1. As per September 2019, we will need the following:
I. About the Applicant:
If the Applicant is a person:
If the Applicant is a company/legal entity:
II. About the Trademark:
*If you intend to have the trademark registered in color, please add a sample of the Trademark in the
colors as how it should be registered
*Disclaimed words are not protected as part of the Trademark Registration
*FOXIP’s consultants can tell you more about the nature of such Priority Documents and whether or not claiming Priority Right is possible
III. About the goods/services the Trademark should be registered for*:
*FOXIP can assist you in selecting the suitable Class(es) and goods/services – see step IV below
IV. If you want us to select the applicable Class(es) and goods/services for your Trademark:
2. Based on the items and data as listed before, we will draft and send the following documents to sign:
I. A Power of Attorney
The Power of Attorney signed by the Applicant is required for us to represent the Applicant in the process of applying for Trademark registration on his behalf.
II. A Confirmation Letter
The Confirmation Letter contains the list of goods/services to be included in your Application as listed under point 1, step III and IV. By signing this document, you agree these goods/services are the ones we will include in your Application. Instead of signing the Confirmation Letter, you could also give us your confirmation on the use of the goods/services mentioned therein by other means of communication.
3. As soon as you have given us confirmation to file the Application, we will do so.
Upon filing your application, we will send you our first Trademark Status Update containing the Filing Receipt issued by the Indonesian Directorate General of Intellectual Property (DGIP).
4. We will inform you about every development in the Application process through our Trademark Status Updates
Have you written the book of the century? Or did you create the new Spongebob Squarepants? Then make sure no one else runs off with your ingenious ideas. Having your Copyright registered offers you a strong legal standing in case of conflicts, and can be done within a month. Read here how you can have your Copyright registered through FOXIP, so we can proceed with your Application quickly and swiftly.
1. In order to prepare your application, we will need the following:
I. About the Applicant:
If the Applicant is a person:
If the Applicant is a company/legal entity:
II. About the Creator*
*In case the Item to establish a Copyright over was created by a party other than the Applicant
III. About the Item to establish a Copyright over:
*What kind of sample we will need depends on whether your Item is a type of software, an artwork or any other type of Item which can be subject to Copyright. FOXIP’s consultants will gladly inform you about this while discussing your case.
2. Based on the items and data as listed before, we will draft and send the following documents to sign:
I. A Power of Attorney
The Power of Attorney signed by the Applicant is required for us to represent the Applicant in the process of applying for Trademark registration on his behalf.
II. A Declaration Letter
By signing the Declaration Letter the Applicant declares the item in question is truly owned by him and is not a mere illegitimate copy of a third party’s creation.
III. A Transfer Letter
The Transfer Letter is only required when the Creator of the Item is different from the Applicant (see point 1, step II). This document states the Creator is willing to transfer the rights over the Item they made to the Applicant. The Transfer Letter, therefore, must be signed by every Creator in question and the Applicant.
3. As soon as you have given us confirmation to file the Application, we will do so.
4. We will inform you about every development in the Application process
If everything goes smoothly, your Copyright should be registered within a month. If any errors occur during the procedure, we will solve those as efficiently as we can. If extra information or documentation from your side is required, we will explain what we need from you in order to complete your application.
Whether you came up with a revolutionary new bottle or a convenient folding table; you have invested your time and money in designing it, and now it’s your time to make money out of it. As experienced Intellectual Property consultants, we know however that you may very well not be the only one trying to gain wealth from your ideas. Read here how we can help you to prevent others from dishonestly benefitting your designs.
1. In order to prepare your application, we will need the following:
I. About the Applicant:
If the Applicant is a person:
If the Applicant is a company/legal entity:
II. About the Designer*
*In case the Item to establish a Copyright over was created by a party other than the Applicant
III. About Industrial Design:
*Usually these are detailed drawings of the Industrial Design, from every side. What kind of sample we will need depends on the type of Industrial Design. FOXIP’s consultants will gladly inform you about this while discussing your case.
*FOXIP’s consultants can tell you more about the nature of such Priority Documents and whether or not claiming Priority Right is possible
2. Based on the items and data as listed before, we will draft and send the following documents to sign:
I. A Power of Attorney
The Power of Attorney signed by the Applicant is required for us to represent the Applicant in the process of applying for Trademark registration on his behalf.
II. A Declaration Letter
By signing the Declaration Letter the Applicant declares the item in question is truly owned by him and is not a mere illegitimate copy of a third party’s creation.
III. A Transfer Letter
The Transfer Letter is only required when the Designer of the Item is different from the Applicant (see point 1, step II). This document states the Designer is willing to transfer the rights over the Item they designed to the Applicant. The Transfer Letter, therefore, must be signed by every Designer in question and the Applicant.
3. As soon as you have given us confirmation to file the Application, we will do so.
4. We will inform you about every development in the Application process
If everything goes smoothly, your Industrial Design should be registered within one to two years. If any errors occur during the procedure, we will solve those as efficiently as we can. If extra information or documentation from your side is required, we will explain what we need from you in order to complete your application.
Patent applications are known to be the toughest cases in Intellectual Property law. This has its reasons; while the purpose of let’s say a trademark is clear, an invention design often encompasses complicated technical drawings and detailed explanations as to its function.
STARBUCKS COFFEE, for example, can not be registered as such under Class 30, as the word ‘coffee’ would be considered descriptive (coffee is literally a product that falls under Class 30). However, only filing the word STARBUCKS while it is registered under other classes as STARBUCKS COFFEE would be weird. With disclaiming the word COFFEE, you basically say ‘the name of this Trademark is indeed STARBUCKS COFFEE, but I do not try to have the word ‘coffee’ registered solely on my behalf’
That the registration of the “AMH Amanah” Trademark is a development
of the AMH Brand which stands for “AMANAH” which belongs to Defendant
registered far ahead of the trademark “Super Amanah Red Ginger”
Plaintiff
– That the Plaintiffs’ arguments argued that the Defendant was imitating
The Plaintiff’s “Super Amanah Red Ginger” brand is very wrong, where
the fact that the “AMH” Brand and the Defendant’s “AMH Brand”
was registered long before the Plaintiff filed for Trademark Registration “Jehe
Merah Super Amanah “, the severity of the” AMH “and” AMH Amanah “Brands are visible
from selling Red Ginger products under the “AMH” and “AMH Amanah” brands
Defendant’s property throughout Indonesia Besides, the fame of the “AMH” Brand
and Defendant’s “AMH Amanah” can be seen from the advertisements of the Red Ginger product
Defendant’s property in various magazines and catalogs.
That before the Plaintiff registered the trademark “Super Amanah Red Ginger”
that previously the “Amanah” Brand Owner was Mr. Sunarto who
having its address at Jalan Abdul Wahab No.36, RT.03, RW.08, Kp. Cinangka, Ex.
Kedaung, Kec. Sawangan, Depok City, West Java, but later on
February 27, 2012 between the Defendant and Mr. Sunarto
Buy and Sell Agreement with Number 001 / ABC / 27022012 which states Mr.
Sunarto as the owner of the “Amanah” Brand in class 32, will
transfer / sell the brand “Amanah” to the Defendant, the Defendant is also entitled
and are authorized to manage the “Amanah” Mark in class 32 together
business operations, that in the beginning business transactions between
Defendant with Mr. Sunarto for the production and sale of ginger drinks
red went well until Defendant registered 2 Trademarks for
The Red Ginger products are the “AMH” Brand and the “AMH Amanah” Brand on
May 30, 2012 and November 10, 2014.
Based on this, the Defendant appealed to the Panel of Judges to refuse
Plaintiff’s claim to the full extent or at least declare the Claim
The plaintiff cannot be accepted (niet onvankelijke verklaard). Or if the Assembly
The judge is of the other opinion, asking for a fair and just decision (ex aequo et bono).
Considering, that to strengthen the arguments / refutation of the Defendant
submit 95 proof of letters marked as Exhibit T -1 to Exhibit T-95.
Besides that, the Defendant also proposed 2 (two) witnesses named TAJUDIN and
PUTIN SUTISNA. As well as an expert named WALTER SIMANDJUNTAK, SH. MH.
Considering, that upon evidence, witness testimony, and expert opinion which
ubmitted at the hearing both by the Plaintiff and Defendant, the Panel of Judges
will only consider it if it is in accordance with the subject matter;
Considering, that the Majlis Hakim will first consider
whether the Plaintiff is an interested party so that he can file
lawsuit in a quo case;
Considering, that the provisions of Article 76 paragraph 1 and 2 of Law No. 20 of 2016
concerning Geography Marks and Indications regulates as follows:
(1) A claim for cancellation of a registered Mark may be filed by a party who
have an interest based on the reasons referred to in Article 20
and / or Article 21
(2) An unregistered trademark owner can file a claim as such
referred to in paragraph (1) after submitting an Application to the Minister.
Considering, that based on evidence P-1a is in the form of Ginger Brand Certificate
Red Super Amanah Registration Number IDM000578443, Filing Date 17
October 2014, Name of Owner: Suwandi Tanuwijaya, for a period of 10
(ten) years to 17 October 2024;
Considering, that based on proven facts and circumstances
as revealed above is related to the provisions of Article 76 paragraph
1 of Law No. 20 of 2016 concerning Brand and Geographical Indications, the Plaintiff
can legally qualify as an interested party for
file a lawsuit in a quo case;
Considering, that after the Panel of Judges read carefully
the claim for cancellation of the mark submitted by the Plaintiff will be the principal
the Plaintiff’s problem with the Defendant is as in the petitum of the lawsuit
number 2 and number 3, which in principle begs to declare the mark
The Defendant – “AMH Amanah” – has similarities in principle or in whole
the Plaintiff’s trademark for similar goods in class 32 and
State the Defendant’s trademark registration – “AMH Amanah” – with a number
IDM000534636 registration is based on bad faith by copying the mark
Plaintiff. Where this is in line with Article 21 paragraph (1) letter a and paragraph
(3) Law No. 20 of 2016;
Considering whereas in his explanation Article 21 paragraph (1) letter a and paragraph
(3) Law No. 20 of 2016 explained as follows:
– What is meant by “equality in essence” is that resemblance
caused by the existence of a dominant element between one Brand with
Other brands give rise to the impression of equality, both
regarding the form, how to place it, how to write it or a combination of elements
In accordance with the statements of the Plaintiff and Defendant’s witnesses named FITRI BAYU
WIDODO, SUPRIANTO, BIJORORO PUJI, TAJUDIN, and SUTISNA PIPIN.
All witnesses explained that the first owner of the trademark “GINGER
RED SUPER SAFE “is Bp. Sunarto, owner of UD. Cipta Mandiri who
producing Super Amanah Red Ginger;
2. That then Bp. Sunarto sold his trademark to the Defendant accordingly
by agreement as in the Purchase and Purchase agreement No. 001 / ABC / 27022012
dated February 27, 2012, vide evidence T-94;
3. That then Bp. Sunarto sells UD. Cipta Mandiri to the Plaintiff accordingly
with Deed of Sale and Purchase of Commercial Enterprises No.24 dated 11 September
2014, which was listed before Yusefin Lely Kusumaningsih, SH.
Notary City of Depok,
4. That the Defendant then registered the trademark “AMH” which is
stands for Amanah with registration number IDM000451140, registered
dated 30 May 2012 filed by the Defendant in this case PT. VARIOUS BOGA
IMAGE, for goods / services class 32; located at Menara Imperium 17th Floor,
Suite C, Metropolitan Kuningan Superblok, Kav. No.1, Jl. HR, Rasuna Said,
Jakarta 12980 (vide evidence T-1).
5. That the Defendant has registered an industrial design for the packaging
used as a packaging for super red ginger on the date of receipt of the application
Industrial Design: March 12, 2014, Certificate No: IDD0000040082, Date
Certificate: May 6, 2014, Name and Address Submitting Application
Industrial Design: PT. ANEKA BOGA IMAGE, having its address at Menara Imperium 17th
Floor, Suite C, Metropolitan Kuningan Superblok, Kav. No.1, Jl. HR, Rasuna Said,
Jakarta 12980 (vide evidence T-7).
Considering, that at the hearing of Plaintiff’s Expert named SOEMARDI
PARTOEDJO, SH. MH. Stating that here is a package of AMANAH and
AMH Amanah with a reddish yellow and reddish yellow background
feel bad. That the dominant elements of the brand are AMANAH and AMH Amanah.
The one on my right is AMANAH and RED GINGER is not an element
Considering, that at the trial of the Defendant’s Expert named WALTER
SIMANDJUNTAK, SH. MH. Stating that the word RED GINGER is not
is a brand, anyone can use the word RED GINGER in a
product. That the word SUPER is not a brand word but a word of praise.
Considering, based on these facts the Panel of Judges is of the opinion
The Plaintiff cannot prove that the Plaintiff is the first registrant
(firs to file), so the Complainant is not legally able to prove the lawsuit
cancellation of the mark owned by the Defendant based on Article 21 paragraph (1)
letter a of Law No. 20 of 2016. Thus, the 3rd Plaintiff’s petitum
plead with the Panel of Judges to “Declare the Defendant’s mark -” AMH
Amanah “- has similarities in principle or in whole with the brand
The Plaintiff’s property for similar goods in class 32 “is eligible to be rejected;
Considering, that the Panel of Judges will then consider the argument
Plaintiff’s claim that wants to cancel the Defendant’s “AMH Manah” mark
which is based on Article 21 paragraph (3) of Law no. 20 of 2016 where you should get it
it is proven that the Defendant registered his trademark in bad faith;
Considering, that the Defendant’s trial was able to prove that
since 2012 the Defendant has marketed this product in accordance with
Defendant’s witness statement named TAJUDIN and PUTIN SUTISNA. other than that
“AMH” and “AMH Amanah” brands can be seen from the sale of Ginger products
Merah, with the names “AMH” and “AMH Amanah” owned by the Defendant throughout Indonesia
as proof of sale the following Brand Ginger products have been sold to
Bali, Surabaya, Jakarta, Medan, Padang, Lampung, Jambi, Manado,
Gorontalo, Makassar, Sidoarjo, Cirebon, Jember, Kolaka, Bulukumba, Sinaji, Bone,
Sengkang, Pare-pare, Wonomulyo, Toraja, Palopo, Mamuju, M freightana, Palu,
Poso, and Toli-toli. (Vide evidence T-18 to T91);
Besides that, the Defendant’s “AMH” and “AMH Amanah” brands are also marketed
through advertisements of Defendant’s Red Ginger products in various magazines and catalogs
(Vide evidence T-9 to T-17) include:
a. Advertisement of Defendant’s Red Ginger products in the Asy Syifa Journal of a healthy lifestyle
Islamic and natural edition 05, 2012
Considering, that the Plaintiff with a lawsuit dated August 8
2018 received and registered at the Registrar of the Commercial Court at
Central Jakarta District Court on August 8, 2018 in the Register
Number 40 / Pdt.Sus-Trademark / 2018 / PN.Niaga.Jkt.Pst, has filed a lawsuit
Brand Cancellation as follows;
A. THE STATUS OF THE PLANNER’S LAW IS THE RIGHT HOLDER
THE REGISTERED BRAND THAT IS THE PARTY
INTERESTED ON THE LAW;
1. That the plaintiff is the right holder of the registered “SU” trademark
with Registration Number: IDM 000541649, January 20 2017,
in Class 30, for types of goods: with description of types of goods / services:
vinegar, soy sauce, sauce, seasonings, food seasonings, vetsin, tea, sugar, coffee,
bread and noodles. (Exhibit P -1);
Whereas the image / logo or registered mark belongs to the plaintiff
as explained above are as follows: (Exhibit P-2);
That aside from being the owner of the rights to the registered mark “SU”, Number
Registration: IDM 000541649, January 20 2017, then
The plaintiff has also used the mark inside
market a type of product: sauce or seasoning or flavoring
cuisine in the form of wine / wine / wine.
That the plaintiff does not produce wine for himself
sauce / seasoning / flavoring these dishes, but import them from
ZHEJIANG ORIENT SHAOXING WINE CO., LTD., An enterprise
which is located in the city of Zhejiang, Shao Xing (or Shao Hsing), Republic
Chinese people. (Exhibit P-3);
That the CLAIMANT needs to explain that the name / word: SHAO XING
or SHAO HSING (kanji transliteration: ISPI or is the name
an area within the territory of the famous People’s Republic of China
as a producer of wine / wine from rice. In the culinary world of cuisine
That this is the type of product sold by the CLAIMANT
by using the registered brand “SU”, registered with Number:
IDM 000541649, January 20, 2017, is a product type: Seasoning
Flavoring cuisine or sauce known as Shaoxing
wine or SHAG WINE (Ip S) or complete: Shao Hsing Hua Tiao
Chiew (transliteration of Kanji: which means “wine that is
from the SHAO HSING Region “.
That is so famous Shao Hsing Hua Tiao Chiew products
(Kanji transliteration: ^ p7 ^ 7Elt? @, meaning: Cuisine wine originating from
SHAO HSING area) in the culinary world of China, so the mention of names
the product is clearly written on the packaging, as is
can be seen in this product example in Malaysia: (Exhibit P-5);
The importance of drafting a closing power of attorney
For clients it often seems simple. You get a contract shove under your nose, you place your signature and your lawyer is all set-up and ready to fight for your rights in the courthouse. Reality is often more complex though. Before your representative hands you this crucial piece of paper, he and his staff have to check numerous data and statements to make sure that everything recorded in the power of attorney is complete and correct. In Indonesia after all, the slightest mistake may lead to a premature end of your lawsuit and you having to start the procedure all over again.
Indonesian jurisprudence counts numerous of examples in which a plaintiff’s case has been closed before it even started because of a mistake in the power of attorney. Who thinks only sketchy law firms representing small local companies make such mistakes should think again. When looking through the documents presented by American multinational ABC’s representatives, judges noticed a discrepancy between the actions as described in the power of attorney signed on behalf of ABC and the actual demands requested by its lawyers. Whereas the power of attorney had only allowed the legal team to plea for cancellation of the defendant’s registered trademark, once in court the legal team also demanded registration of the mark on behalf of their client. Without even looking further into the case, the judges decided to declare ABC’s request inadmissible (niet-ontvankelijk verklaard) based on HIR art. 123.
https://translate.google.com/translate?hl=en&sl=id&u=https://news.detik.com/berita/d-4569424/menangkan-wafer-superman-indonesia-ma-gugatan-dc-comics-tidak-jelas&prev=search – niet-ontvankelijk verklaard, advocaat verzocht rechtbank dingen die niet in POA genoemd waren – belang van een goede, complete POA ; A lawsuit signed by a power of attorney is based on a power of attorney that does not meet the conditions outlined in Article 123 paragraph (1) of the HIR ;
Also this case; vague objective (both cancellation for defendant and granting for plaintiff),
Jurnal123.com – The Superman brand wafer wins against the Superman character maker, DC Comics. The wafer is indeed legendary because it was sold in Indonesia since decades ago.
“PT Marxing Fam Makmur received a brand certificate from the first Ministry of Law and Human Rights in 1993 for classes 30 and 34 and renewed every 10 years,” said PT Marxing Fam Makmur’s attorney, Sururi Elhaque, when talking with detikcom, Tuesday (05/28/2019 ).
Also read: Winning Against DC Comics, This is the Superman Indonesian Wafer Argument
Grades 30 and 34 are the categories of wafers, biscuits, rice, sago, and the like. PT Marxing then collaborated with Siantar Top to produce chocolate wafers. The wafer then flooded every corner of stalls across Indonesia and was widely known.
In 2017, DC Comics only took the initiative to register the Superman brand with the Ministry of Law and Human Rights. The dispute arose because the trademark name was already held by PT Marxing Fam Makmur. The case went to court and PT Marxing Fam Makmur won the dispute.
“In Indonesia, Superman is known as a cartoon character, not a food product. So our clients are not coupled with the introduction of DC Comics, “Sururi said, explaining the reasons for the victory.
The case went to court and PT Marxing Fam Makmur won the dispute. “In Indonesia, Superman is known as a cartoon character, not a food product. So our client does not accompany DC Comics’ fame,” Sururi said, explaining the reasons for the victory.
