Justise 1: The Importance of Brand Protection

JAKARTA. Cases of brand disputes often occur in Indonesia.  Several cases of brand disputes that have attracted the public's attention were the case of a well-known brand owned by Ruben Onsu called Geprek Bensu and businessman Benny Sujono, who also has a similar business with his brand "I Am Geprek Bensu". Then there is also the case of IKEA Nederland against IKEA Indonesia, a Surabaya-based  company and there is also a case of brand dispute involving DC Comics against  Superman chocolate wafer cookies or known as Wafer Superman.

Those cases show the importance of protecting a brand.  This was the main topic of discussion in the first edition of the online #Justise discussion with the theme "Avoid Any Dispute and Protect Your Brand".

The discussion event that was initiated by MUC Attorney At Law and supported by MUC Consulting presented two speakers, namely Brand Inspector of The Directorate General of Intellectual Property (DGIP), Ministry of Law and Human Rights (MoLHR)  Agung Indriyanto and Senior Associate MUC Attorney At Law Kiki Amaruly. The discussion, which took place on 3 September 2020, was hosted by MUC Associate Attorney At Law Bayu Aditya.

This discussion event was held online through the Zoom application. However, the course of the discussion can still be watched live through the MUC Consulting Youtube channel. On this occasion, Agung Indriyanto opened the discussion by explaining the importance of the role of brand registration for every business entity. He revealed that a brand is an intangible asset. Although it is not visible but the role is quite important. A brand is an exclusive right owned by its owner, which prohibits others from using the brand or allowing others to use the brand. "Rights to a brand may arise due to use or registration, depending on the protection of the brand," he revealed.

Agung continued, in Indonesia, the right to a brand is by registration. So whoever registers first or first to file, then he or she is entitled to brand protection or exclusivity. Meanwhile, in other countries such as the United States (US), brand protection is based on first actual use or first to use. Apart from the first registration, if a business entity obtains exclusive rights to a brand, there are two principles that underlie the protection of the mark. That is, the principle of territory, so it only applies to certain territories, in this case Indonesia, then the second principle is specialty or only protects the type of goods or services requested. "So, for example, only clothing products that are registered, then there is no protection for food and other products," he continued.

Then related to the process of how a brand is born and then developed, Agung said there are three phases that should be passed. First is the registration phase, then the commercialization phase that is when the brand is marketed, and the last is law enforcement phase. For this third phase, it may or may not happen.
So, before the phase of law enforcement occurs, he stresses there are several things that brand owners need to do related to mitigating the risk of such disputes. Among other things, make sure that the registered brand has never existed before. Furthermore, prospective brand owners must have several other brand candidates, in case if the first registered brand is rejected. The registered brand should also have its own uniqueness so that it can be easily identified by the public.

In the phase of the brand registration application procedure, Agung explained that there would be a formalities examination phase. The application for the brand will be announced in the official brand newsletter on the website of the Directorate General of Intellectual Property (DGIP). Through this phase, all parties are invited to express objections to the brand's application. "They can submit a letter of objection to DGIP, so the brand application may be rejected if the objection is accepted. But if accepted, the certificate will be issued," he explained.

If the brand is officially registered, then the brand owner gets protection over the brand for 10 years. If the protection period expires, it can be renewed again. In addition, the brand must be commercialized. If it is not used for three consecutive years, it could be abolished under a third-party lawsuit. Agung continued, in fact there are other options so that the unused brand continue to produce, including by licensing the brand.  "Because brand can also be leased, this is a form of brand exploitation and there are already many examples," he added.

Senior Associate Attorney At Law Kiki Amaruly added that brand protection is very important indeed. Because, the implications are not only financially detrimental, but the reputation of the business is also at stake. Therefore, she stressed the need to register brand as an effort to mitigate risks. Furthermore, when registering, make sure the brand is original, not copying someone else's. Then, it is also necessary to ensure that the goods and services of the registered brand are in accordance with future business prospects. "Check with the DGIP, whether this brand is safe or already used. Once all is confirmed, then just registered," she added.

Kiki also revealed that the brand registration process is quite easy because everything can be accessed online.  Meanwhile, the registration fee for the brand is also very affordable, which is only IDR 500 thousand per brand. So, MSMEs can also register their brand to DGIP. She also stressed the importance of including the actual full address. So, when there is a brand rejection, the applicant can find out and immediately decide on a follow-up attempt regarding the brand's application.

"We can accept the refusal or we can make a rebuttal. With the rebuttal we can convince that our brand is different from the others. If the DGIP accepts we can continue or if we can't, we can proceed to the commercial court," she explained.

For information, the #Justise (Jurist Talk in Series) program is a discussion event that is facilitated by experts and competent business law practitioners to discuss the latest legal and legal business issues. This discussion event was conducted through ZOOM application and broadcast live through several social media platforms namely MUC Consulting Youtube channel and via Twitter in the form of live tweets. To review the course of the discussion, you can access it on the MUC Consulting youtube channel via the following link: https://youtu.be/sQZK-FZZUK0