CAN MARK DISPUTES BE RESOLVED THROUGH ARBITRATION?
“Mark is a property right which has the absolute right as a base to file a lawsuit for trademark infringement, including a lawsuit to the arbitration forum in Indonesian National Arbitration Board (BANI).”
Mark is one of the important things on a product made by the company. Mark can be a plus for a product or services. For example, 2 (two) bottles of juice with same quality and quantity, the branded one will be deemed as a better product and will be easily remembered than the unbranded bottle. Thus, the brand has an important contribution to the company in a product marketing process. Therefore, many companies register their marks, so it cannot be claimed or used illegally by others. Although a product’s mark of a company has been registered, there is still dispute arises over the mark.
Article 83 paragraph 1 Law No. 20 Year 2016 concerning Mark and Geographic Indication (“Mark and Geographical Indication Law”) regulates:
“The owner of registered Mark and/or recipient of registered Mark Licenses may file a lawsuit to another party who unlawfully uses Mark which has the same or substantial similarity of the like product/service in the form of:
- Indemnity lawsuit; and/or
- Cessation of all acts related to the Mark usage.”
Therefore, the owner of registered mark or the recipient of registered mark license may file a lawsuit to the person who unlawfully uses the Mark.
The lawsuit shall be filed to the Commercial Court (Article 83 paragraph 1 of Mark and Geographical Indication Law). In addition, a mark lawsuit may be resolved through arbitration or alternative dispute resolution (Article 93 of Mark and Geographical Indication Law).
Arbitration procedure is not described in detail in Mark and Geographical Indication Law. It only explains that the definition of alternative dispute resolution is negotiation, mediation, conciliation, and other methods chosen by the parties.
Basically, arbitration and alternative dispute resolution are based on Law No. 30 Year 1999 concerning Arbitration and Alternative Dispute Resolution (Arbitration Law). Arbitration is a method of civil dispute resolution out of the court, based on arbitration agreement made in writing by the parties in dispute. Therefore, choosing arbitration as a method of dispute resolution is based on the agreement made by the parties in dispute. This arbitration agreement may be made prior to the dispute (arbitration clause) or after a dispute arises (submission clause).
Furthermore, based on Mark and Geographical Indication Law, it can be concluded that mark dispute may not only be resolved through lawsuit to the Commercial Court, but also through arbitration or other methods of alternative dispute resolution.
If the parties in dispute want to resolve a mark dispute through arbitration, the parties shall make a written agreement to choose arbitration as a dispute settlement forum. This agreement may be made prior to the dispute or after a dispute arises. This is in accordance with the arbitration principles contained in Arbitration Law, that arbitration is based on an arbitration agreement. Hence, in a mark dispute, the parties in dispute may choose arbitration as a dispute settlement forum.
We hope this article is useful.
BP Lawyers can assist you
BP Lawyers can assist you in providing the best solution in drafting and preparing all documents related to the mark dispute settlement through arbitration in Indonesian National Arbitration Board (BANI) or other institutions. You can contact us via:
Dalmy Nasution, S.H.