Ruben Onsu, actor and entrepreneur, was pulled into another Intellectual Property infringement lawsuit involving his trademark. The ‘Geprek Bensu by Ruben Onsu’ and ‘I Am Geprek Bensu’ trademarks are said to possess similarities with registered trademarks belonging to PT Ayam Geprek Benny Sujono.

Lawsuit number 32/Pdt.Sus-HKI/Merek/2022/PN Niaga Jkt.Pst was launched to the Central Jakarta Commercial Court on Monday, 4 April, 2022. Based on information available on Sistem Informasi Penelusuran Perkara Pengadilan Negeri Jakarta Pusat (Central Jakarta District Court Case Investigation Information System), these are the demands made by PT Ayam Geprek Benny Sujono, who plays the part of plaintiff in this lawsuit:

1. Grant the Plaintiff's claim in its entirety;
2. State that the Plaintiff is the owner and user of the trademark "I AM GEPREK BENSU SEDEP BENEEERRR" or commonly called "I AM GEPREK BENSU", which is legal and has been registered in the General Register of Marks at the Directorate General of Intellectual Property Rights (in casu Defendant II) numbered IDM000643531 dated May 24, 2019, on behalf of PT AYAM GEPREK BENNY SUJONO to protect the types of goods in class: 43;
3. State that the trademark “I AM GEPREK BENSU” owned by Defendant I has similarities in principle or in its entirety with the trademark “I AM GEPREK BENSU SEDEP BENEEERRR” belonging to the Plaintiff;
4. State that the trademark “I AM GEPREK BENSU” belonging to Defendant I is the name of the Legal Entity “PT AYAM GEPREK BENNY SUJONO, which is abbreviated as AYAM GEPREK BENSU” (in casu the Plaintiff);
5. Declare null and void the registration of the “I AM GEPREK BENSU” trademark on behalf of Defendant I with all the legal consequences;
6. Order the Ministry of Law and Human Rights of the Republic of Indonesia Cq. Directorate General of Intellectual Property and Rights Cq. Directorate of Trademarks and Geographical Indications (in casu Defendant II) to carry out the cancellation of the “I AM GEPREK BENSU” trademark belonging to Defendant I by crossing out the registration of the trademark from the General Register of trademarks, with all the legal consequences and announce the cancellation in the Official Gazette of Trademarks;
7. Sentence Defendant I to pay compensation to the Plaintiff in the amount of Rp. 100,000,000,000.- (One hundred billion rupiah), payment has to be done immediately and all at once;
8. Sentence Defendant I to stop all actions related to the use of the “GEPREK BENSU BY RUBEN ONSU” trademark also known as “I AM GEPREK BENSU BY RUBEN ONSU” belonging to Defendant I, including but not limited to the act of producing, distributing and/or trading the food business, the “GEPREK BENSU BY RUBEN ONSU trademark or also known as I AM GEPREK BENSU BY RUBEN ONSU” owned by Defendant I, and other acts;
9. Sentence Defendant I to pay forced money (dwangsom) for the delay in implementing this verdict with the amount of  Rp. 10,000,000,- (ten million rupiahs) for each day of delay, starting from the day this case receives a court verdict with permanent legal force (inkracht van gewijsde) until the verdict in this case are carried out properly and in full;
10. Sentence Defendant I to pay all court fees as conformity with the law.

The center of this legal feud is the similarities amongst the trademarks. ‘I am Geprek Bensu’ belonging to Ruben Onsu, its competitor ‘I Am Geprek Bensu Sedep Beneeerrr’ belonging to PT Ayam Geprek Benny Sujono, ‘Ayam Geprek Bensu’, the name under which PT Ayam Geprek Benny Sujono market their goods, and ‘Geprek Bensu’ another trademark of Ruben Bensu’s. 

We need to clarify that this is not the first time the two parties clash in an Intellectual Property feud. PT Ayam Geprek Benny Sujono sued Ruben Onsu quite a number of times before, around 2019 – 2020. Ruben Onsu launched his own lawsuit against PT Ayam Geprek Benny Sujono in 2019. 

Ruben Onsu Alleged to Have Committed Trademark Infringement

The system applied in this country is dubbed “first to file”. Essentially, this system provides legal protection and rights to the party who registered their trademark first. Any party who, after the registration of the trademark, creates or uses a trademark with similarities in principle or in its entirety to said registered trademark, is considered to have committed trademark infringement which in turn makes them eligible for compensation-based lawsuit (see Article 83 paragraph (1) Law Number 20 of 2016 concerning Trademarks and Geographical Indications).

As can be seen on Pangkalan Data Kekayaan Intelektual (Intellectual Property Database), the ‘I Am Geprek Bensu Sedep Beneeerrr’ trademark numbered IDM000643531 under class 43 category (Restaurant services, services in providing food and drinks, snacks, cafes, catering, self-service restaurants, restaurants, places to eat that serve) was registered on 24 May, 2019. Meanwhile, Ruben Onsu’s trademark under the name ‘I Am Geprek Bensu’ with number IDM000654532 was registered on 6 September, 2019, and ‘Geprek Bensu’ numbered DM000643602 was registered on 24 May, 2019. The conclusion that can be drawn here is that up against the ‘I am Geprek Bensu’ trademark, the trademark belonging to PT Ayam Geprek Benny Sujono registered under the name ‘I Am Geprek Bensu Sedep Beneeerrr’ predates the aforementioned trademark. 

Let’s circle back to “first to file”. Using that system to analyse this case, we can deduce that since ‘I Am Geprek Bensu Sedep Beneeerrr’ trademark is the first registered trademark with its principle and characteristics, therefore, it received legal rights as well as legal protection. PT Ayam Geprek Benny Sujono as the owner of ‘I Am Geprek Bensu Sedep Beneeerrr’ has the necessary legal ground to sue considering the similarities between their trademark and Ruben Onsu.

For the purpose of drawing a clearer conclusion, we’ll refer to Law Number 20 of 2016 concerning Trademarks and Geographical Indications, henceforth will be called the Trademark Law. The Explanation bit of the Trademark Law defines ‘similarity in principles’ as “similarity caused by the presence of a dominant element between one trademark and another which creates the impression of similarity, in regard to the form, placement method, writing method or combination of elements, as well as the similarity of speech sounds, contained in the trademark.”

When we examine the similarities between ‘I Am Geprek Bensu Sedep Beneeerrr’ and ‘I Am Geprek Bensu’, we find significant similarities in principle. Remove ‘Sedep Beneeerrr’ from the trademark and you’re left with two ‘I Am Geprek Bensu’ trademarks. That is the core of the issue. The relevancy of a trademark comes from its identity as the face of a product as well as what differs one product from the others. That is precisely why there cannot be any similarity between one trademark and another. Similarities give roots to confusion, especially if the trademarks represent the same type of goods, such is the case here. 

Since this is not the first time the two parties are involved in a legal feud surrounding their Intellectual Property, it would serve the parties well for Ruben Onsu to stop using the word ‘Bensu’ for his trademark. After all, PT Ayam Geprek Benny Sujono has already used the word for their trademark. 

Now, what lesson can be learned here? It’s to ensure your trademark differs from other trademarks. Legal fights are never cheap, so it’s better to avoid them. If you have any questions regarding trademark similarities or infringement, or perhaps you have IP related needs? do let us know through our email marketing@ambadar.co.id. We’ll be sure to get in touch with you.  

 

Source(s):

• detiknews
• Law Number 20 of 2016 regarding Trademarks and Geographical Indications
• Central Jakarta District Court Case Investigation Information System