TAKING LEGAL ACTION AGAINST TRADEMARK INFRINGEMENT BY LICENSEE
Referring to Article 1 point 18 of Indonesian Law No. 20 of 2016 on Trademark and Geographical Indication (hereinafter Trademark and Geographical Indication Law), license shall mean the permit granted by the owner of registered Mark to other party based on written agreement in accordance with the law and regulation to use Registered Mark. Based on the said meaning, it is clearly seen that license is only restricted to permit of use instead of fully assigning the trademark rights.
It should be noted and underlined that there are differences between a trademark assignment and a license. Trademark assignment means fully assigning the trademark rights (exclusivity of the trademark) from the assignor (former proprietor) to the assignee (new proprietor). These exclusive rights are included to exploit the trademark privately and/or to permit and/or to forbid other parties in using the trademark and also to re-assign the trademark to another party. The owner of registered trademark has fully rights to take any necessary legal action in case there is trademark infringement which also infringes his/her exclusive rights.
Further, whether the licensee has a right to take any necessary legal action remembering the meaning of license is only restricted to permit of use.
As asserted in the Article 83 Paragraph 1 of Trademark and Geographical Indication, “The owner of registered Mark and/or the Licensee of Registered Mark can file a lawsuit against other party who, without right, used the Mark that has basic or entire similarities for similar goods and/or services in the form of:
- compensation lawsuit and/or
- termination of all activities related with the use of such Mark”.
Therefore, even though the meaning of license does not clearly state the rights of licensee, based on the above stipulation the licensee has the same right to take any legal action against the infringement of registered trademark. Please note that the legal action is not restricted to the mentioned legal action in the above stipulation, but also criminal legal action in the Article 100 of Trademark and Geographical Indication stated that:
“Every person who is without right to use the same Mark entirely with Registered Mark owned by other party for similar goods and/or services produced and/or traded, shall be imposed with imprisonment for the longest of 5 (lima) years and/or penalty at the most amounting IDR 2,000,000,000.00 (two billion rupiah).
(2) Every person who is without right to use the Mark that has basic similarities with Registered Mark owned by other party for similar goods and/or services produced and/or traded, shall be imposed with imprisonment for the longest of 4 (four) years and/or penalty at the most amounting IDR 2,000,000,000.00 (two billion rupiah).
(3) Every person who violates the provisions as referred to in paragraph (1) and paragraph (2), with type of goods may cause health disturbance, living environment disturbance, and/or the death of human being, shall be imposed with imprisonment for the longest of 10 (ten) years and/or penalty at the most amounting IDR 5,000,000,000.00 (five billion rupiah)”.