Analisis Yuridis Atas Pemberlakuan Sistem First to File pada Pendaftaran Merek (Terkenal) di Indonesia (Studi Kasus : Putusan Mahkamah Agung Nomor 836k/Pdt.Sus-HKI/2022)

Abstract

Trademark as one of the Intellectual Property Instrument plays a very important role in business activities. Therefore, the trademark must be registered to gain legal protection. Nowadays, Indonesia implements First to File Trademark registration system. However, this system implementation gives an opportunity for people to name-drop other well-known trademark since it has its own charm. Thus, the exitence of similar trademark can distract consumers or cause consumer confusion. This condition has threatened the legal certainty and legal protection of the well-known trademark owner. This normative juridical thesis research employs the theoretical framework of Legal Certainty and Legal Protection. This research is descriptive analytics research. First to File trademark registration system which is recently implemented in Indonesia is considered to provide legal protection compared to First to Use trademark registration system which has been formerly implemented. However, First to File trademark registration system gives an opportunity for people to register their trademark with bad faith since their trademark has similarity with certain famous trademark with the intention to name-drop their trademark popularity. However, Law Number 20/2016 has provided proper legal certainty and legal protection for the owner of the famous trademark through the mechanism of Article 21 and 76 of Law Number 20/2016. First to File trademark registration system under Law Number 20/2016 provides more legal certainty compared to First to Use trademark registration system under Law Number 21/1961, especially it is related to famous trademark. This system has given sufficient legal certainty for the owner of famous trademark although there is a weakness in terms of name-dropping practice. This weakness certainly has been anticipated by Law Number 20/2016 which rejects the registration for trademark that has similarities to other famous trademark both for similar and dissimilar type of product and/or service as mandated by Paris Convention and TRIPS which has be ratified by Indonesia. In the court case, legal certainty and legal protection is clearly has been given to the famous trademark owner where the Plaintiff's trademark must be rejected although he is the first registrar for Starbucks trademark in Indonesia.