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MIXING OF BRAND CANCELLATION LAWSUITS AND BRAND

INFRINGEMENT LAWSUITS

Yosi Esa Hadi Saputra

, Henny Marlyna

Faculty of Law, Universitas Indonesia, Depok, West Java, Indonesia

yosiesahadisaputra@gmail.com

ARTICLE INFO

ABSTRACT

Published: January 29

, 2023

The mixing between trademark infringement lawsuits and annulments has

made it an issue in trademark law enforcement, thus making it an excuse for

the Supreme Court to overturn the Court's ruling. It raises new cases from

the procedural law of brand law enforcement, but the dimensions of brand

protection must still be upheld. For this reason, it is necessary to explain

the difference between a trademark infringement lawsuit and trademark

cancellation, as well as the reasons for the supreme court judge in decision

No.525K/Pdt.Sus-HKI/2020 annulling judgment No. 4/Pdt.Sus-

HKI/Merek/2019/PN Niaga.Sby regarding the mixing between the

trademark infringement lawsuit and the cancellation of the brand. The

Panel of Judges of the Surabaya District Court in Decision Number

4/Pdt.Sus-HKI/Merek/2019/PN-Niaga.Sby seems to prioritize its

establishment based on the perspective of legal expediency, thus

categorizing the defendant's actions as trademark violations. The Panel of

Judges of the Supreme Court prioritizes its establishment based on the

perspective of order, so the reason for overturning the decision of the

Surabaya District Court considering the mixing between the infringement

lawsuit and the cancellation of the brand is based on legal certainty. It is

necessary to discuss the pattern of application of the law that converges

between trademark cancellation lawsuits and trademark infringement and

advise the Supreme Court to make guidelines in the form of regulations

aimed at the judiciary that contain provisions on the criteria between

annulment lawsuits and trademark infringement, so that they can be a

reference for judges in the proceedings.

Keywords: brand, curcuma

lawsuit, cancellation, violation

This work is licensed under CC

BY-SA 4.0

INTRODUCTION

The main purpose of the brand regulation is to protect a brand from people or syndicates who

intend to damage or piggyback on the brand's reputation. However, even though brand regulations

have been shaped in such a way as to protect the brand in question, in the field brand is still often

misused by individuals who basically have bad intentions such as hitchhiking to the fame of a

product with a certain brand. Likewise, businesses that register a brand intentionally resemble a

well-known trademark as an attempt or bad faith to deceive consumers.

One of the cases of brand dispute occurred between Hindarto (as the plaintiff) against PT.

Kiki Jaya Plastik (as defendant I) and the Directorate General of Intellectual Property (as defendant

II). The beginning of this brand dispute occurred when Hindarto on April 23, 1996, received a

statement letter from the Agent of PT. Kiki Jaya Plastik, whose contents stated she was guilty, had

circulated (Sold) bag from the Sinar Kilat brand that PT. Kiki Wijaya had produced, in which the

brand and image of the Plastic Creation belongs to Hindarto. Later, Hindarto sued PT. Kiki Jaya

Plastik because he considered that there was an element of bad intention in using the imitation of

Hindarto's brand and logo creation by producing bags from plastic crackle bags produced from

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PT. Kiki Jaya Plastik and still circulating in the plastic bag shops, which is known to imitate

Hindarto’s brand and logo.

Furthermore, it is known that PT. Kiki Jaya Plastik only has a registered Express Brand

Etiquette Certificate No. 311840 color description black on white, class goods/services: 22, (not a

plastic bag/crackle), but used by PT. Kiki Jaya Plastik produces brand Plastic bags/crackles, with

classes of goods/services: 16. Therefore, for the sake of Hindarto's legal protection for the actions

of PT. Kiki Jaya Plastik who imitated his brand, Hindarto pleaded with a panel of judges of the

Surabaya Commercial District Court to cancel the PT. Kiki Jaya Plastik-owned brand.

In short, Hindarto's plea was granted by the Panel of Judges who said the amar of the

judgment essentially explained that the PT. Kiki Jaya Plastik has used and or produced bags from

plastic (crackle bags) with the brand KILAT even though PT. Kiki Jaya Plastik does not have the

right to do so. Kiki Jaya Plastik is categorized as an act of violation of rights to Hindarto's KILAT

brand which contains elements of not good faith, therefore the panel of judges also decided to

cancel the Kilat Brand Etiquette Brand Certificate registered with PT. Kiki Jaya Plastik.

Not satisfied with the Surabaya District Court's decision, the defendants filed an appeal to

the Supreme Court. However, in this appeal application, it was made by the Directorate General

of Intellectual Property formerly as defendant II who had the position only to submit and comply

with the content of the judgment. In short, the Panel of Judges of the Supreme Court accepted and

granted the appeal application filed, in its decision the Court decided "Granting the appeal

application from the Cassation Applicant and granting the Commercial Court Decision at the

Surabaya District Court Number 4/Pdt.Sus-HKI/Merek/2019/PN-Niaga.Sby."

Based on the brief description of the brand dispute case, there are exciting things to review.

This can be seen from the consideration of the Supreme Court which is the basis for annulling

Judgment No. 4/Pdt.Sus-HKI/Merek/2019/PN-Niaga.Sby. The Court held that Judex Facti had

misapplied the law, with the only consideration that the Court found that the plaintiff's suit which

had mixed the complaint between the trademark infringement suit and the trademark annulment

suit was improper to make the suit vague because the trademark infringement suit used the legal

construction of Section 83 of the Trademarks Act on the grounds of using its brand without rights.

with a claim for compensation and or termination of all acts related to the use of the brand, but

cannot demand the cancellation of the Defendant's trademark certificate, because the suit for

cancellation of the trademark, the certificate has been regulated and must be filed separately as

stipulated in Article 76 based on the reasons in Article 20 and/or 21 of the Trademark Law with

the claim/legal consequences of the cancellation of the brand to mix up two different legal

constructions both the reasons and the legal effect is a violation of the rules of procedural law

therefore sufficient grounds for the Supreme Court to overturn the Judex Facti judgment and

adjudicate the case itself a quo.

It should be noted that the point in consideration of the Court is that the calculation of a

trademark infringement lawsuit with a trademark cancellation lawsuit is an improper action to

make the lawsuit run away because of the trademark infringement using the legal construction of

Article 83 of Law No.20/2016, while The claim for cancellation of the trademark certificate has

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been regulated and must be filed separately as stipulated in Article 76 based on the reasons in

Article 20 and/or 21 of Law No.20/2016.

In this regard, according to Aryanto (2018), an annulment lawsuit is "a procedure taken by

one party to seek and eliminate the existence of registration of a brand from the General Register

of Brands or cancel the validity of rights based on a trademark certificate." Meanwhile, trademark

infringement according to Heri Aryanto is an effort by the owner of the registered Brand and/or

the recipient of the registered Trademark License to file a lawsuit against other parties who without

the right to use the Brand that has the same in essence, or in its entirety for similar goods and/or

services to the Commercial Court. A suit for infringement of the brand can be in the form of a

claim for damages; and/or termination of all conduct relating to the use of the brand."

Against the case of the brand dispute between Hindarto and PT. Kiki Jaya Plastik is not a

trademark infringement lawsuit, considering that Hindarto and/or his attorney have absolutely no

argument in either his posita or petitum to state the actions of PT. Kiki Jaya Plastik as a brand

violation, especially Hindarto in his posita and petitum there is no postulating loss and/or claiming

damages. Hindarto simply explained that PT. Kiki Jaya Plastik by having a registered Express

Brand Etiquette Brand Certificate No. 311840 description of black on white, Class of

goods/services 22, (not a plastic bag/crackle), but used by PT. Kiki Jaya Plastik produces plastic

bag/crackle brands, with a class of 16 goods/services. Therefore, Hindarto and/or his attorney

asserted in the posita and petitum of his lawsuit explaining and pleading with the Panel of Judges

for the legal protection of his trademark, then the Brand belongs to PT. Kiki Jaya Plastik must be

canceled as an attempt to eliminate the existence of registration of a brand or cancel the validity

of rights based on the trademark certificate.

Departing from the case briefly described above, this matter really needs to be studied in an

in-depth way since apparently, researchers barely discuss about it, specifically in Indonesia. In

general, the issue of IPR law enforcement in Indonesia has not shown encouraging signs, missing

the above problems, not to mention other major threats to brand infringement due to technological

and social information developments that areso easy to annex, confess, and claim other people's

brands themselves, without being noticed by the owner or holder of the brand. So it is interesting

to study further but specifically regarding law enforcement related to the mixing between

trademark cancellation lawsuits and brand infringement that occurs in the Commercial Court, this

needs to be done in order to improve the brand law enforcement system as well as to find solutions

to related issues.

METHOD

This research is legal research. Legal research is a process to determine the rule of law,

principles, or legal doctrines to answer the legal issues at hand (Soekanto & Mamudji, 2006).

Normativelegal research is useful for building legal argumentation by tracing the internal aspects

of "Ought" norms from the form of: norm conditions (conflict, blurred, empty), norm structure,

norm system, norm character associated with logic (Diantha, 2016). This research was carried out

in a descriptive analysis with the statute approach, the conceptual approach and the case approach.

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Furthermore, the main data used were secondary data sources, consisting of primary, secondary,

and tertiary legal materials. The data collection technique used was library research through

documentation. The data collected was analyzed by using content analysis.

RESULT AND DISCUSSION

Legal Protection of Trademark Rights

The importance of protecting Intellectual Property Rights became a necessity after the

completion of the GATT (General Agreement on Tariff and Trade) agreement and after the

Marrakech Conference in April 1994, when the GATT framework was agreed to be replaced with

a world trade system known as the World Trade Organization (WTO). The Government of the

Republic of Indonesia ratified it through Law Number 7 of 1994 concerning ratification of the

Agreement Establishing the World Trade Organization (Approval for the Establishment of the

World Trade Organization) promulgated in the Statute Book of the Republic of Indonesia 1994

nomor 57, dated November 2, 1994. Intellectual Property Rights are broadly divided into 2 (two)

parts, namely Copyright and Industrial Property Rights which include Patents, Industrial Designs,

Brands, Countering Fraudulent Competition Practices, Integrated Circuit Layout Design, and

Trade Secrets (Oktaviarni, 2016).

Referring to Rahardjo's (2012) opinion, "Legal protection is to protect the human rights of

those harmed by others, and such protection is given to the community so that they can enjoy the

rights granted by law." Thus, legal protection can also be interpreted as an illustration of the work

of the legal function to realize the purpose of the law, to provide justice, expediency, and legal

certainty. Furthermore, according to Hadjon (1997) that "legal protection of the people as a

preventive and repressive government action." Preventive legal protection aims to prevent disputes

from occurring, directing the government's actions to be prudent in decision-making based on

discretion and repressive protection aimed at preventing disputes from occurring and protecting

the rights of the public in general.

Legal protection for legal trademark holders is intended to provide exclusive rights for brand

holders (Exclusive rights) so that other parties cannot use the same or similar brands they have for

the same or almost the same goods. Such special rights tend to be a monopoly, meaning that only

the brand holder can use them. Brand holders can use their brands with a note without violating

the rules in the use of the brand, as well as prohibiting other parties from using their brand or

giving permission (Purwaka, 2017).

Preventive protection in Law No. 20/2016 is protection before a violation of the law against

the brand occurs. In this case, the preventive protection provided by Law No. 20 of 2016 highly

depends on the brand owner. As a consequence of the use of the constitutive system, legal

protection of new trademark rights will be provided by the state when the brand has been registered

with the DGH of the Ministry of Law and Human Rights, as stated in the provisions of Article 3

of Law No. 20 of 2016. Indonesia adheres to a constitutive system, wherein the nature of this

system, registrants are required to register for a brand to get protection. This system is also known

as the First-to-File system. The system asserts that the person who first registers the brand is then

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he who is entitled to the brand. Even though Indonesia adheres to trademark registration with a

constitutive system, the protection of brands that have not been registered in Indonesia will still

get protection, because Indonesia has ratified the Paris Convention and the TRIPS Agreement

(Santoso, 2016).

Preventive legal protection is also accommodated since the implementation of regional

autonomy, based on Law Number 23 of 2014 concerning Regional Government, where local

governments have the authority to determine regional policies. Therefore, the government and

local governments are responsible for fostering and developing MSMEs in their regions. The

principles and responsibilities related to brands for local governments are among others regulated

in Law No. 3 of 2014 concerning the industry, namely regarding the role of government and local

government in the development and utilization of creativity and innovation, especially in providing

consultation, guidance, and advocacy for the protection of intellectual property rights for small

businesses. The protection of rights to brands is also related to Law No. 20 of 2008 concerning

Micro, Small, and Medium Enterprises, as Article 14 which explains specifically in terms of trade

promotion aspects of small and medium enterprises states that trade promotion is aimed at

facilitating the ownership of intellectual property rights to products and designs of Micro

Enterprises, Small, and Medium in domestic business activities and exports.

From the three laws, it is clear that the government and/or local governments must build,

empower, and facilitate the protection of MSME Intellectual Property Rights, including brand

rights to MSMEs. To increase awareness of MSMEs to register brands, several efforts have been

made by the Central Government and Regional Governments by making efforts to protect the law

against brand holders, including by providing information on what rights the brand owner gets for

the certificates they have. The provision of this information is also carried out through counseling

and socialization.

In addition to the preventive protection described above, the framers of Law No.20/2016 also

provide repressive protection. Repressive protection against brands arises whenever brand rights

are violated (Dewi, 2021). This means that this repressive legal protection is granted in case of a

trademark infringement. The means of repressive protection are found in the regulation of appeals

(Articles 28 to 32) and the existence of an independent institution, namely the Trademark Appeal

Commission, which has the authority to examine the application for objection to the brand being

requested, and the appeal for the rejection of the application for registration of trademark rights

(Article 33 and Article 34). Another means is the filing of a lawsuit to the Commercial Court, and

the parties can file advanced legal remedies, namely appeals to the Supreme Court (Tobing, 2018).

Through repressive legal protection, a registered brand's ownership will receive legal

protection for trademark infringement. Civilly, in the event of a violation of the rights to the brand,

the trademark holder can file a lawsuit against the other party who violated the rights to the brand.

The type of lawsuit is classified under Law No.20/2016 which consists of a Trademark Removal

Lawsuit (Article 72), a Trademark Cancellation Lawsuit (Article 76 based its reasons on Article

20 and/or Article 21), a Trademark Infringement Lawsuit (Article 83 including its compensation

claim), and a Lawsuit for Trademark Rejection (Article 72).

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Furthermore, in addition to the civil mechanism, repressive protection of trademark law can

also be prosecuted as described in Chapter XVIII regarding the criminal provisions contained in

Article 100, Article 102, and Article 103 of Law No.20/2016 where the offense included is a

complaint as stated in the explanation of article 103. Against criminal law enforcement through

law enforcement officials by following the provisions and the criminal procedure law, both at the

level of complaints, investigations, and court decisions.

Furthermore, in the general explanation of Law No.20/2016, it is also emphasized that to

provide more legal protection for registered Brand owners from trademark violations committed

by other parties, criminal sanctions for violations of the Brand are strengthened, especially those

that threaten human health, the environment, and can result in death. Given that the issue of the

Brand is closely related to economic factors, in this Act, the criminal sanction of fines is

aggravated. Therefore, in terms of repressive legal protection, judicial institutions and other law

enforcement such as the police, civil servant investigators (PPNS), prosecutors, and advocates are

indispensable for their participation in the law enforcement of a brand.

Difference Between Annulment and Brand Infringement Lawsuit

A Brand Cancellation Lawsuit is a lawsuit often filed in Commercial Court. The definition

of Brand Cancellation according to Aryanto (2018) states that a cancellation lawsuit is a procedure

taken by one party to find and eliminate the existence of registration of a brand from the General

A claim for cancellation of a registered Brand may be filed by interested parties and the

owner of an unregistered Brand after applying to the Minister. The interested parties referred to

above include Registered Brand Owners, Prosecutors, Foundations or Institutions in the consumer

field, and Religious Assemblies or Institutions. Whereas what is meant by an Unregistered Brand

Owner is a good faith but unregistered Brand Owner or a well-known Brand Owner but whose

brand is not registered."

A trademark cancellation lawsuit is filed with the Commercial Court against the Registered

Brand Owner and can only be filed within 5 (five) years from the date of registration of the Brand.

However, a trademark cancellation lawsuit can be filed indefinitely if an element of bad faith

and/or the brand in question is contrary to state ideology, laws and regulations, morality, religion,

decency, and public order. The cancellation of a brand is regulated as in Article 76 based on the

reasons under Sections 20 and/or 21 of the Trademark Act with the claim/legal consequences of

the cancellation of the brand.

The definition of a brand violation lawsuit is a lawsuit for compensation and/or Termination

of all actions related to the use of the Brand (Lasut, 2019). The owner of the registered Brand

and/or the recipient of the registered Trademark License may file a lawsuit against another party

without the right to use the same person who has the same in essence or its entirety for similar

goods and/or services to the Court. In addition to the registered Brand Owner and/or registered

Trademark Licensee, a trademark infringement lawsuit may also be filed by the registered

trademark based on a court decision. The granting of the right to file a civil suit based on fraudulent

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acts committed by other parties is intended to provide legal protection to the owner of a well-

known brand even if it has not been registered. Article 83 of Law No. 20/2016 stipulates that there

are two forms or contents of the claim for trademark infringement, namely a lawsuit for

compensation and/or termination of all actions related to the use of the Brand.

The compensation can also take the form of material damages and immaterial damages.

Material compensation is in the form of apparent losses and can be estimated at cost. For example,

the impact of brand consumption by unauthorized parties causes their goods to be slightly sold

because consumers buy products that use illegal brands made by the non-powerful party. So by

the way the number of several goods with similar brands is so much spread in the brand. On the

contrary, immaterial damages are in the form of compensation lawsuits resulting from the

unauthorized use of the brand so that the entitled party suffers a moral loss of rights. For example,

parties who are not entitled to the brand produce low-quality goods, resulting in consumers so that

they do not consume products issued by the owner of the brand concerned.

One of the changes in Law No. 20/2016 is that the rules are stricter on famous brands than

the old Law No. 15/2001 on Brands. Therefore, even though in Law No. 20/2016 the classification

of famous brands is still not explained, a brand can be declared famous through a judicial decision.

So that after being recognized as a well-known brand, the owner of the brand can file a lawsuit

against parties without the right to use a brand that has similarities in essence or its entirety for

similar goods and/or services (Purwaka, 2017).

Parties who feel aggrieved by the registration of a Brand can pursue legal remedies in the

form of filing a cancellation lawsuit (If the brand is already registered), requesting a settlement

through an alternative dispute resolution mechanism, or reporting to the police or civil servant

investigators. Article 99 paragraph (2) letter A of Law No. 20/2016 states that investigators

conduct an examination of the correctness of reports or information related to criminal acts in the

field of brands. A person complains to the police usually because they feel that the brand has been

registered first, and then there is an application for registration of a new brand which is likely to

have similarities in essence or in its entirety. The whistle blower was convinced that the requested

merek had something in common after he got information about the registration. Of course, it is

the investigator who will check the veracity of the complainant's complaint. Even though the

requested brand has been registered, it does not mean that it escapes the possibility of an annulment

lawsuit (Kurnia, 2019).

The regulation of trademark cancellation lawsuits is normatively regulated in articles 76 to

78 of Law No. 20/2016. The provisions of article 76 paragraph 1 state that thecancellation of a

registered brand may be filed by an interested party based on the reasons referred to in Article 20

and/or Article 21. From the sound of these provisions, it can be interpreted that the cancellation

lawsuit is intended for a brand registered first. Furthermore, the provisions of article 76 state that

it is 'submitted by interested parties', whereas in the explanation of article 76 paragraph 1 it states

that yang means 'interested parties' including registered Brand owners, prosecutors,

foundations/institutions in the consumer sector, and religious assemblies/institutions."

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Furthermore, article 76 paragraph 1 states that the cancellation lawsuit is made based on the

reasons of Article 20 and/or Article 21, from the sound of these provisions, it can be interpreted

that the reasons for the trademark cancellation lawsuit apply limitatively based on article 20 and/or

article 21 of Law No. 20/2016. Referring to the provisions of article 20 and article 21, a brand can

be canceled because:

1) Article 21:

a) Bis in conflict with state ideology, legislation, morality, religion, decency, or public

order;

b) Same with, relating to, or hanya mention barang and/or the services for which

registration is requested;

c) Contains elements that can mislead the public about the origin, quality, type, size, type,

purpose of use of the goods and/or services for which registration is requested or is the

name of a protected plant variety for similar goods and/or services;

d) Mcontains information that is not in accordance with the quality, man, or efficacy of

the goods and / or services produced;

e) Ithas no distinguishing power; and/or

f) It is a common name and/or coat of arms of common property.

2) Article 21: The brand has an essentially or complete similarity to:

a) The registered brand belongs to another party or is requested in advance by the other

party for similar goods and/or services;

b) Famous brands belonging to other parties for similar goods and/or services;

c) Well-known brands belonging to other parties for non-similar goods and/or services

that meet certain requirements; or

d) Geographical Indications are listed.

e) It is or resembles the name or abbreviation of a famous person's name, photograph, or

legal entity name owned by another person, except for the written consent of the

entitled;

f) Mis an imitation of or resembling the name or abbreviation of the name, flag, emblem

or symbol or emblem of a country, or national or international institution, except with

the written consent of the competent authority; or

g) It is an imitation or resembling an official brand or stamp or seal used by the state or

Government agency, except with the written consent of the competent authority.

Article 21 paragraph 3 further explains that an application is rejected if an applicant files it

in bad faith. From this provision, it can be interpreted that the claim for cancellation of the brand

must be accompanied by the good faith of the applicant for cancellation of the brand as well, it is

determined that the cancellation applicant does not commit an arbitrary act to impose and/or cancel

a registered brand. Furthermore, article 76 paragraph 2 also specifies that an unregistered

Trademark Owner may file a suit as referred to in paragraph (1) after filing an application with the

Minister. This means that a claim for cancellation of a brand can also be requested by an

unregistered/unregistered owner of the brand, but must first submit an application for cancellation

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to the minister. What is meant by 'Unregistered brand owner' is the owner of a brand that has good

faith but is not registered or the owner of a well-known brand whose brand is not registered. And

in the event of the cancellation lawsuit, the plaintiff and/or defendant residing outside the wilayah

of the State of the Republic of Indonesia (NKRI) then the lawsuit is filed with the Jakarta

Commercial Court (Safitri & Astariyani, 2019).

Furthermore, article 76 paragraph 3 also provides that an annulment is filed with the

Commercial Court against the registered brand’s owner. It means the cancellation of a registered

brand can be filed with the Commercial Court as a last resort after the cancellation application is

filed with the relevant minister as per article 76 paragraph 2. Against the decision of the

Commercial Court, the cancellation of the brand as referred to in can be filed as a legal remedy

for kasasi, as stipulated in article 76 of Law No. 20/2016. If the application for cancellation of a

brand is approved by the Minister or the Commercial Court, then the follow-up of the trademark

registration process is carried out by the Directorate General of Intellectual Property by crossing

out the cancelled brand from the General Register of Trademarks with a note of the reason and

date of the cancellation. The cancellation of the registration is notified in writing to the owner of

the brand or its attorney stating the reasons for the cancellation and affirming that from the date of

removal from the General Register of Brands, the Certificate of Brands in question is declared

invalid. The removal of the registration of a brand from the General Register of Brands is

announced in the Official Gazette of Brands. The cancellation and removal of the trademark

registration resulted at the end of the legal protection of the brand in question as well (Laela, 2020).

Regarding trademark infringement lawsuits, Law No. 20/2016 also opens up opportunities

for trademark rights holders to file a lawsuit with the Court in the event of trademark infringement.

This repressive legal protection is granted to the rightful holders of the brand. This means that if

the rights to the brand have been held, then according to Law No. 20/2016, the brand holder will

get legal protection, meaning that if there is a violation of the rights to the trademark, the brand

holder can file a lawsuit against other parties who violate the rights to the brand (Purwaka, 2017).

This infringement lawsuit is aimed at obtaining compensation and termination of all actions related

to the use of the brand. The suit was filed in the Commercial Court with the applicant's identity

included in full. Likewise with the identity and address of the applicant's attorney, when

represented, it includes the color, if the application uses color elements, even the name of the

country and the date of the brand request, as well as a description of the type of product or service

and attached to the brand label as well as proof of payment of the fee (Purwaka, 2017).

The Commercial Court, which is determined as a formal judicial institution for civil lawsuits,

opens wide opportunities for brand holders to defend their rights. Especially after it is clear that

this brand right is part of the law of things, and it will certainly not be different from the claims in

other laws of things. An event is also a civil event i.e. it revolves around onrechtmatigedaad or

default. The problem then is why the claims as stated in Article 83 of Law No. 20/2016 can be

categorized into events of unlawful acts, and claims based on Article 84 (as far as the obligations

of the licensee are categorized) categorized as default. The reason is that the events provided for

in Article 83, the birth of rights and obligations are based on legislation, not by agreement.

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Meanwhile, the event regulated in Article 84 is the birth of rights and obligations on the basis of

an agreement (License). Based on this, it can be interpreted as long as the claim for compensation

based on the two events above also applies the provisions contained in the Civil Code. The latter

serves as Lex Generalis, while Law No. 20/2016 functions as Lex Specialis.

As described in the preceding sub-chapter, infringement of rights to a brand may occur if

there are parties other than the owner of the brand who without the right to use the brand have the

same in essence or in its entirety for similar goods or services. The parties entitled to file a lawsuit

against the brand are the owner of the registered brand and the licensee of the registered brand.

The licensee of the registered brand can file a lawsuit individually or jointly with the owner of the

brand in question. The lawsuit filed is in the form of compensation and/or termination of all actions

related to the use of the brand.

According to Aryani (2011), compensation and/or termination of actions related to the

unauthorized use of the brand is reasonable, because such actions are very detrimental to the legal

owner of the brand. The loss that is directly felt is an economic loss, but besides that, it can also

damage the reputation of the brand, especially if the goods or services that use the brand without

these rights are of lower quality than the products and services of the rightful owner of the brand.

The trademark suit was filed with the Commercial Court within the jurisdiction of the defendant's

residence or domicile (Aryani, 2011).

Based on the explanation above, ada certain characteristics regarding claims for violation of

rights to the brand, namely in terms or form of liability in the field of the brand. According to

Purwaka (2017), violations in the field of trademarks are civil and criminal liability. Perpetrators

of criminal acts in the field of brands who have been civilly accountable, can still be prosecuted or

held criminally responsible. There is a judgment in a civil case that decides that the defendant is

proven to have used without the same trademark rights in its entirety or the same in essence as the

registered brand, the judgment in this civil case can be used as one of the evidence in criminal

cases to impose a criminal conviction of a criminal offender in trademarking. On the other hand,

to further strengthen the success of a civil lawsuit for trademark infringement, criminal liability is

first provided. If the perpetrator of the criminal act has been criminally responsible, which means

that he has been blamed and sentenced to a criminal offense, then the plaintiff as the owner of the

aggrieved registered brand will be more successful in making a lawsuit, namely asking for

cancellation of the brand as well as asking for compensation to the defendant who has used without

the same trademark rights as a whole or in essence with his registered brand (Purwaka, 2017).

Analysis of Surabaya District Court Decision Number 4/Pdt.Sus-HKI/Merek/2019/PN-

Niaga.Sby Jo. Supreme Court Decision Number 525 K/PDT.SUS-HKI/2020

The brief description of the brand dispute case has interesting things to review. This can be

seen from the consideration of the Supreme Court which is the basis for annulling Judgment No.

4/Pdt.Sus-HKI/Merek/2019/PN Niaga.Sby. The Court held that Judex Facti had misapplied the

law, with only one consideration which according to the Court that the plaintiff's suit which had

mixed between the trademark infringement suit and the trademark annulment suit was improper

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so as to make the suit vague because the trademark infringement suit used the legal construction

of Section 83 of the Act- The Trademark Act is based on the reason for using its brand without

rights with a claim for damages and or termination of all acts y an g relating to the use of the brand,

but cannot demand the cancellation of the trademark certificate belonging to the plaintiff,because

against the suit for cancellation of the trademark certificate has been regulated and must be filed

separately as provided in Article 76 on the basis of the reasons in Article 20 and/or 21 of the Act.

The trademark law with its legal demands/consequences of the cancellation of the brand so as to

mix up two different legal constructs both the reasons and the legal consequences constitute a

violation of the order of the procedural law therefore sufficient grounds for the Supreme Court to

overturn the judgment of Judex Facti and adjudicate the case itself a quo.

Departing from the case outlined, in principle the lawsuit filed by Hindarto based on his

posita and petitum was actually in accordance with the construction of the Article 76 of Law No.

20/2016 by basing the reasons on Article 20 and/or Article 21 of Law No. 20/2016 with its legal

demands/consequences regarding the cancellation of the brand. However, the Panel of Judges of

the Surabaya District Court judged in excessive consideration by "categorizing the actions of

defendant I as trademark violations." Thus, making a separate interpretation when the appeal was

filed. Therefore, it appears that Supreme Court Decision No. 525 K/Rev.Sus-HKI/2020 is also

not observant to see the construction in the lawsuit and the Judex Facti judgment in Judgment No.

4/Rev.Sus-HKI/Merek/2019/PN-Niaga.Sby. Thus, considering the trademark cancellation and

trademark infringement lawsuits have been mixed up.

The mixing of a lawsuit illustrates the interrelationship of one lawsuit with another with

differences in its formal jurisdiction. In a technical way judicial mixing of lawsuits can have both

objective and subjective functions. Its objective function is that the examination of material facts

or objects of dispute is carried out in its entirety and is not limited by the jurisdiction of procedural

law of a formal nature. As for the subjective function, interested parties in the dispute get an

unambiguous resolution because there is more than one legal product.

If the theoretical framework is connected with the legal considerations of Decision No. 525

K/Pdt.Sus-HKI/2020, then the logical question that arises is whether the validity of objectively

mixing a lawsuit has taken into account the theoretical foundations that have developed in the

applicable legal theory and doctrine. Despite Regulation No. 525 K/Rev.Sus-HKI/2020 does not

explicitly mention the theoretical basis underlying its consideration, but to analyze these legal

considerations can be done by tracking meta-juridically the concepts and terms of law that appear

in the consideration of the judgment (Isman, 2021). Referring to the opinion, the mixing of the

lawsuit can be seen from 3 things, namely

First, it can be seen from the point of view of a legal subject whose legal interests are violated

is the same subject of law. Based on the constatation of legal facts it is known that the subject

whose legal interests are violated is Hindarto as the owner of the "Flash Ray" Brand so that this

element is fulfilled.

Second, there is a causality relationship between trademark cancellation and trademark

infringement with plaintiff's loss. The aforesaid action is evidence of a causality relationship

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between the defendants' misconduct and the violation of the plaintiff's legal interests. Using

argumentum per analogiam, it can be deduced that as long as the two legal events (Annulment and

trademark infringement) underlying the lawsuit have a close causality relationship, then it qualifies

to be qualitated as a trademark infringement lawsuit. As for which conditions of the legal event

(mixing of annulments and trademark violations) occurred, then the review of these is less relevant

in the perspective of the doelmatigheid process. The reason that is the theoretical basis for mixing

a lawsuit for annulment and trademark infringement is the close interrelationship of legal facts.

Perhaps, this is the basis for the Panel of Judges of Decision Number 4/Pdt.Sus-

HKI/Merek/2019/PN-Niaga. Sby categorized defendant I's actions as trademark infringement.

Third, as the second point of the legal view of the Surabaya District Court Judges Panel in

Decision Number 4/Pdt.Sus-HKI/Merek/2019/PN-Niaga.Sby is oriented towards the

doelmatigheid process. It can be seen in his legal considerations quote which explicitly

considersthat "the judge needs to look at the facts rather than the subject matter of the case".

However, the Supreme Court in Judgment No. 525 K/Rev.Sus-HKI/2020 is more nuanced

rechtmatigheid process, so it is not in line with the structure of the legal facts that make up this

case. The application of the doelmatigheid process applied by the Panel of Judges of the Surabaya

District Court in Decision Number 4/Pdt.Sus-HKI/Merek/2019/PN-Niaga.Sby previously to

affirm the merger of lawsuits is a legal establishment may be carried out by the Judge, as long as

it meets its material aspects, especially related to the close relationship of facts that are aligned

with the legal consequences of the legal interests to be protected.

Taking into account Judgment No. 525 K/Rev.Sus-HKI/2020, atheoretical imposition of law

in the form of trademark infringement containing damages shouldhave alinear line with what deeds

are blamed on the defendant. If the defendant is found guilty of committing an act of trademark

infringement, up to his compensation with the punishment blamed on him. In this setting, which

is the opposite, as a result, this matter must be a dilemma in the future era because brand

infringement that contains compensation for loss usually adheres to actual lost, on the contrary,

the cancellation of the brand tends to lead to potential lost.

Mixing of Infringement and Cancellation of Trademark Lawsuits

If the affirmation of the mixing of lawsuits in this case is correlated as a basic moral to

realize equal liberties, then it is clear that the Surabaya District Court Judge in Decision Number

4/Pdt.Sus-HKI/Merek/2019/PN-Niaga.Sby relinquished the obscure libel's explanatory teaching

on the debate between trademark infringement and trademark annulment by prioritizing reality at

trial. Such thinking is the legal stance of a Judge, given the fact that abuse of circumstances can

occur even in a hearing on the subject matter. Furthermore, the disapproval of the Supreme Court

Panel of Judges on the issue of mixing between cancellation and trademark infringement claims

can also be connected because of differences in the construction of articles that have been included

in Law No. 20/2016, which in fact already has a tendency to lead to legal protection of the interests

of the owners of rights to the brand.

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Departing from the case between Hindarto and PT. Kiki Wijaya Plastik is not a trademark

infringement lawsuit, considering that Hindarto and/or his attorney has absolutely no argument in

either his posita or petitum to state the actions of PT. Kiki Wijaya Plastik as a brand violation,

especially Hindarto in his posita and petitum there is no postulating loss and/or claiming damages.

Hindarto simply explained that PT. Kiki Wijaya Plastik by having a registered Express Brand

Etiquette Certificate No. 311840 description of black on white, class goods/services 22, (not a

plastic bag/crackle), but used by PT. Kiki Wijaya Plastik toproduce plastic bag/crackle brand, with

16 classes of goods/services. Therefore, Hindarto and/or his attorney asserted in the posita and

petitum of his lawsuit explaining and pleading with the Panel of Judges for the legal protection of

his brand, then the Brand belongs to PT. Kiki Wijaya Plastik must be canceled as an effort to

eliminate the existence of registration of a brand or cancel the validity of rights based on the

trademark certificate. Moreover, regarding the merger of the cancellation and infringement of the

brand which according to the Supreme Court is a lawsuit to be vague (obscuur libel) can undermine

the existence of legal protection against the Holdto brand.

Mixing a lawsuit or samenvoeging van vordering is the merger of several lawsuits into one

lawsuit or the merger of more than one lawsuit into one lawsuit or several suits combined into one

(Harahap, 2013). The reason for the need to mix up lawsuits for cancellation and infringement of

this brand is solely so that the existence of legal protection of the brand is still fulfilled, through

the enforcement of the trademark law in the Commercial Court is a form of repressive protection

as an effort that is implemented because preventive protection cannot accommodate the interests

of the Registered Brand Owner. The urgency in the conditions of the application of the cancellation

petition as well as the infringement of the brand is foremost to ensure in a fair manner the points

of law that contribute importantly to the error (whether in the manner of silliness or willfulness)

to the loss of the other party. Because also legal protection as one of the elements of legal balance

is a psychological factor born from the interweaving of mindsets, and awareness of legal norms.

Looking at Hindarto's case against PT. Kiki Wijaya Plastik can be interpreted to mean

thatthis f enomena indicates the need to discuss the pattern of convergence of legal application,

considering that in practice there are so many tangents from aspects of legal logic and legal facts

that exist at the time of the course of the trial. However, the issue arises from the consideration of

the Judge of the Court who stated that the case is an objective mixing of suits (Cancellation of the

brand and infringement of the brand) without considering other more important things in the case,

namely proof.

Further analysis related to the legal considerations of the Supreme Court's decision in Case

Number 525 K/Pdt.Sus-HKI/2020, correlated with the interpretation model of the work of legal

functions to realize legal objectives, so as to provide justice, expediency and legal certainty.

However, judging from hisconsiderations in this case, it can be concluded that the characteristics

of the Supreme Court's interpretation of law do not rest on the principle of distributive justice. This

means that the absence of a combination with legal protection and legal expediency in the decision-

making process. Whereas the factthat justice from all other aspects is important. Expediency and

legal certainty occupy the strata below justice.

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If we look at this judgment which rejects or considers that it is a mixing of claims between

infringement and cancellation of the brand, then all the legal facts and affirmations of mixing the

lawsuit as in judgment No. 525 K/Pdt.Sus-HKI/2020 do not contain any defects. This is what is

concerned, considering that based on the ruling, it can become a legal loophole in the future for

law enforcement against the brand and the existence of legal protection to be lost. Supreme Court

decision No. 525 K/Pdt.Sus-HKI/2020 which rejects the mixing of lawsuits (Violation and

cancellation of trademarks) is at least known to have unclear and concrete legal considerations.

Whereas in consideration of stating that plaintiff's suit that has mixed up between a trademark

infringement suit and a trademark cancellation suit is improper so as to make the suit vague, on

the grounds of using its brand without rights with a claim for damages. In the said judgment it is

not stated that which part of the suit is qualitified as a suit that mixes up the infringement with the

suit for cancellation of the brand, as well as the part of the reason for which plaintiff in his petitum

is demanding damages. In fact, if you pay attention to Decision No. 4/Pdt.Sus-

HKI/Merek/2019/PN-Niaga.Sby, there is no mixing of the lawsuit between the violation and the

trademark cancellation lawsuit. Where the plaintiff (i.c Hindarto) only postulated in both his posita

and petitum only to distort the defendant's brand (i.c PT. Kiki Wijaya Plastik) without any claim

for compensation.

Considering that the object of the dispute in decision Number 525 K/Pdt.Sus-HKI/2020 is

not solely related to the claim for the right to damages, but concerns the principle of legal propriety

of a material nature, namely legal protection of the legal interests of the plaintiff (i.c Hindarto).

This legal protection is a tendency as Rahardjo (2012) argues that legal protection is to provide

protection to the human rights of those who are harmed by others and that protection is given to

the community so that they can enjoy the rights granted by law. Therefore, legal protection can

also be interpreted as an illustration of the work of the legal function to realize the purpose of the

law, so as to provide justice, expediency and legal certainty. Thus, legal protection is realized

through the alignment of rights and obligations violated by the defendant (i.c. PT. Kiki Wijaya

Plastik).

Regarding legal certainty, in this case Law No. 20/2016 has actually accommodated legal

mechanisms that can be pursued repressively through its arrangements as mentioned in the

preceding sub-chapter consisting of a trademark removal lawsuit (Article 72), a trademark

cancellation lawsuit (article 76 based its reasons on Article 20 and/or Article 21), a trademark

infringement lawsuit (Article 83 includes in its claim for compensation), and a lawsuit for the

rejection of the brand (Article 72). Thus, through these articles, legal certainty has actually been

realized.

There is a jurisprudence that prohibits the merger of suits as in the Supreme Court Decision

No.677.K / Sip / 1972, dated December 20, 1972, reads as follows: "A case subject to a special

Procedural Law, cannot be combined with other cases subject to the General Procedural Law, even

if the two cases are closely related to each other. For example, a general civil lawsuit is combined

with a special civil lawsuit, such as a lawsuit about PMH and a claim for damages combined with

a case regarding the right to the Brand (Merkenrecht)" (vide provisions on IPR). That the three

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suits are related to each other, so that even though the mixing of the suits is not regulated in the

RBg (also HIR) but because the merger will facilitate the process and avoid the possibility of

conflicting judgments, the merger is indeed viewed in terms of events (Processual doelmatig).

Based on this, there is an important thing that the value of legal certainty is not only in the

form of articles in laws and regulations, but there is a correlation between one rule of law and

another both subtansively. This means that a legal principle is when a rule is made definitively

because it regulates clearly and logically. Clear in the sense of not causing doubts (multi-

interpretation) and logical in the sense of being a system of norms with other norms so as not to

cause loopholes in norms that will have an impact on law enforcement (Suardi & Candra, 2016).

Therefore, the legal creed is also an inseparable feature of the law, especially for written legal

norms. Laws without the value of certainty will lose meaning because they can no longer be used

as behavior for everyone. That is why the creed itself is referred to as one of the purposes of the

law. Legal certainty will guarantee that a person carries out behavior in accordance with applicable

legal provisions, on the contrary, without legal certainty, a person does not have standard

provisions in carrying out behavior (Swantoro et al., 2017). The reference means that the a. such

protection indicates that the state is obliged to enforce the law of the Brand. Therefore, if there is

a violation of the rights of a registered brand, the owner of the Brand can file a lawsuit with the

competent Commercial Court. With this protection, justice will be realized which is the purpose

of the law. One of the goals of the law is to realize community justice, withlegal protection, the

legal owner of the brand is protected by his rights. Based on this explanation, it is the basis for the

legal establishment of the Supreme Court Panel of Judges in decision No. 525 K/Pdt.Sus-

HKI/2020 which rejects the mixing of lawsuits (violation and cancellation of brands) based on

legal certainty.

CONCLUSION

Based on the discussion above, it is concluded that the difference between a lawsuit for

cancellation of a brand and a rigid infringement of a brand has been qualified in Law No. 20/2016.

Gugatan cancellation m erek is a legal procedure that can be filed by interested parties eliminating

the existence of registration of a brand, while a trademark infringement lawsuit is a lawsuit that

demands compensation against other parties who without the right to use merek goods and/or

services. The existence of such differences, rigidly in special categories and different constructions

set forth in the Act, is done to protect the interests of the owners of rights to the brand. So that acts

that have the potential to deceive the origin of the brand can be accommodated for its protection

by the Law. Judge of Surabaya District Court in Decision Number 4/Pdt.Sus-

HKI/Merek/2019/PN-Niaga.Sby seems to prioritize his stance based on the perspective of legal

expediency/doelmatigheid process, thus categorizing the actions of PT. Kiki Wijaya Plastik is an

act of brand infringement. However, the Supreme Court Panel of Judges prioritizes its stance based

on the perspective of order/processual doelmatig, so the reason for overturning the Surabaya

District Court's decision considering the mixing between the infringement lawsuit and the

cancellation of the brand is based on legal certainty. In addition, the researcher would like to

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2023

suggest future research that more variables affecting this particular issue are expected to emerge

to ignite more findings on it.

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