On March 22, 2021, PT Gudang Garam Tbk filed a lawsuit for the cancellation of the trademark owned by PT Gudang Baru with case number 3 / Pdt.Sus-HKI / Mark / 2021 / in the Surabaya district court. Gudang Garam previously filed a lawsuit in 2012 and convicted Haji Ali Khosin, the owner of Gudang Baru.
The lawsuit lasted for years, until the Supreme Court Decision Number 104 PK / Pid.Sus / 2015 on November 10, 2015 and Supreme Court Decision Number 119 PK / Pdt.Sus-HKI / 2017 on August 28, 2017, were won by Gudang Garam. . Because of this defeat, Ali Khosin was sentenced to 10 months in prison and a fine of IDR 50,000,000.
However, Gudang Baru did not pay attention to this decision, even though it had lost in court, Gudang Baru still used brands that had similarities in essence to the brands owned by Gudang Garam. This is what made the cigarette company founded by Surya Wonowidjojo to file a lawsuit again.
“It was found in the field that the brands on Gudang Baru products were misleading. So it seems as if the products belonging to the New Gudang are or have the potential to be considered products of the Company and / or part of the products owned by the Company, “explained the representative of Gudang Garam management.
Even so, it was said that this incident had no impact on the operational activities, financial condition, or business continuity of PT Gudang Garam Tbk. As of this writing, the Gudang Garam and Gudang Baru cases are still ongoing.
Gudang Garam said that the use of the Gudang Baru brand was intentionally carried out in bad faith. Because of this, Gudang Garam asked Gudang Baru to withdraw its trade.
“Ordered Defendant II to reject all applications for registration of marks on the basis of the words Gudang Baru, Gudang Baru Origin, and Gedung Baru, which were submitted by Defendant I, companies owned by Defendant I and its affiliates, and / or their heirs, or those which filed by another third party to Defendant II which has substantially similarities and / or in its entirety to the famous Gudang Garam brand, “he explained.
PT Gudang Garam Tbk then asked the Surabaya district court to grant their request and asked the Surabaya district court to send a copy of the decision to the Directorate of Trademarks at the Directorate General of Intellectual Property, Ministry of Law and Human Rights.
“Granted the plaintiff’s lawsuit in its entirety. Ordered Defendant I to submit and implement this decision. To order Defendant I to pay all court fees, ”the petitum wrote.
What we can learn from this case are:
1. Importance of Trademark Registration
The thing that must be considered from the problem of brand disputes between PT Gudang Garam Tbk and PT Gudang Baru is the importance of intellectual property rights in a company. From the above problems, an interesting fact is found, where the brands in Gudang Baru products that have similarities with the brands on Gudang Garam’s products are considered to be misleading, because they have the potential to cause confusion for consumers. Fortunately Gudang Garam is aware of the importance of intellectual property rights. By registering brand names in various brand classes, PT Gudang Garam Tbk can protect its brands from other individuals or groups who want to imitate and / or use the brands and products owned by Gudang Garam.
2. The dangers of copying someone else’s brand
Because in the protection of the trademark rights there is a first to file principle where the one who gets the protection of the trademark right is the one who registers the mark first, the party who registers the mark first, is legally protected and can sue any party who tries to imitate the trademark of the product being made. From the above case, after losing the trial Haji Ali Khosin was jailed for 10 months and paid a fine. When viewed from Law number 20 of 2016 concerning Trademarks and Geographical Indications, criminal sanctions for violators of trademark rights can be up to 10 years in prison and fines of up to 5 billion rupiah even the removal of trademark names from DGIP (Directorate General of Intellectual Property)
Therefore, if Partners do not want their Intellectual Property to be threatened and their rights are disturbed in the future or have any questions regarding Intellectual Property, please do not hesitate to contact us at marketing@ambadar.co.id. Our Intellectual Property Consultants are ready to assist you.