Adopting Passing off Concept of Unfair Competition Into Indonesia's Trademark Law

• Author: Ali Oksy Murbiantoro, Rachmad Safa'at, Yuliati & Sukarmi
• Position: Brawijaya University, Faculty of Law, Malang, INDONESIA
• Pages: 133-142

Center for Open Access in Science  https://www.centerprode.com/ojls. html

Open Journal for Legal Studies, 2020, 3(2), 133-142.

ISSN (Online) 2620-0619  https://doi.org/10.32591/coas.ojls.0302.05133m

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© Authors. Terms and conditions of Creative Commons Attribution 4.0 International (CC BY 4.0) apply.

Correspondence: Ali Oksy Murbiantoro (Student at Faculty of Law), Brawijaya University, Malang, East

Java, INDONESIA. E-mail: murbiantoro.fhub@gmail.com.

Adopting Passing off Concept of Unfair Competition

Into Indonesia’s Trademark Law

Ali Oksy Murbiantoro, Rachmad Safa’at, Yuliati & Sukarmi

Brawijaya University, Faculty of Law, Malang, INDONESIA

Received: 19 June 2020  Accepted: 30 September 2020  Published O nline: 8 November 2020

Abstract

The application of the concepts of unfair competition in Indonesia’s Trademark Law is one of the

reasons as a proper solution in providing justification and argumentatio n basis, in terms of to

answer the issue of impersonation of trademarks on different kinds goods, particularly for

impersonation of domestic well known mark obtains sufficient legal basis due to the existence of

protection and legal certainty for the trademark owner which is impersonated thereof. The

current Indonesia trademark law basically only provide trademark lawsuit in terms of

cancellation for register ed mark; legal damages cl aim. Both lawsuits related to using

unauthorized registered mark based on overall or basic similarities in the same kind of goods,

although unauthorized use in different kind of good is possible to be sued but it is restricted fo r

international well-known mark only. In addition t here is such trademark lawsuit in connection

with deletion registered mark means this proceeding enforce w hen the registered mark does not

use for three years as of the mark registered. Cons idering that actually the concept of unfair

competition basically reflec t to the understanding of unlawful act (tort) which stating in the

article 1365 Indonesia’s Civil Code. However, this understanding is not covered in Indonesia’s

Trademark la w instead of it is enforced in Indonesia’s civil law and civil procedure. Hence, if

there is a trademark impersonation dispute in the different kinds of goods, the resolution of the

dispute will refer to unlawful act and that lawsuit will be trialed by regular district court, even

though based on trademark law for trademark lawsuit should be trialed by commercial court.

Therefore, it is lead to uncertainty in terms of the authorize court which is examined and handled

the said case. To include the concept of unfair competition as a part of trademark violation into

Indonesia’s trademark law hopefully enable to anticipate in reducing any kind of types trademark

violation occurred including in the form of violation such impersonation of domestic well-known

mark in different kind of goods. This r esearch is normative legal research with a legislation,

concept, and comparative approach. The legal material with technical analysis i s done by the

method of interpretation. Comparing to the concept of unfair competition, passing off within

Indonesia’s trademark law; International Trademark Convention will answers whether the

understanding of unfair competition applied in the trademark violation in Indonesia particularly

in connection with the issues of impersonation towar ds registered of well-known mark

domestically is already proper either for domestic or worldwide perspectiv e.

Keywords: impersonation, different kinds of goods, unfair competition, well-known mark,

domestically well-known mark, Article 21 Paragraph 3 of Indonesia’s Trademark Law, Article 16

Paragraph 3 of TRIPs, Article 6 of the Paris Convention.