Famous Trademarks Research Articles

Protecting Famous Trademarks: Legal Insights from the EV Electro Voice Case in Indonesia

Trademark rights play a critical role in business, particularly in navigating global competition and safeguarding well-known brands. However, the principle of good faith in trademark registration is often exploited to mimic the fame of established trademarks. This study examines the prohibition of the registered trademark "EV ELECTROVOICE + Logo" as contested by the trademarks "EV and Logo" and "ELECTRO-VOICE," as outlined in Decision Number 83/Pdt.Sus-HKI/Merek/2023/PN Niaga Jkt.Pst. The research aims to analyze the legal rationale behind the court's decision and its implications for trademark protection in Indonesia, especially concerning the application of the first-to-file principle and the protection of well-known trademarks. Employing a normative juridical method, the study focuses on examining relevant legal norms and their application in practice. The findings reveal that the court nullified the “EV ELECTROVOICE + Logo” registration due to bad faith, as the registration was intended to leverage the reputation of well-known trademarks. This decision underscores the significance of maintaining good faith in trademark registration and highlights the influence of international law in securing rights for well-known trademarks. The study contributes to a deeper understanding of trademark law dynamics in Indonesia and sheds light on the decision's implications for protecting famous trademarks within the national legal framework. Ultimately, the research aims to enrich the comprehension of trademark law principles in Indonesia and provide insights for improving regulations to address the challenges of trademark protection in a globalized era.

Liability for the Offence of Counterfeiting Famous Trade Marks

Liability for the Offence of Counterfeiting Famous Trade Marks

Penggunaan Kata Umum Dalam Pendaftaran Merek Pada Sengketa Merek STRONG Antara Hardwood Private Limited Dengan PT. Unilever Indonesia, Tbk. Berdasarkan Undang-Undang No. 20 Tahun 2016 Tentang Merek Dan Indikasi Geografis

There are provisions regarding trademarks that cannot be registered in Law No. 20 Year 2016, one of which is in Article 20 letter f which states that "Trademarks cannot be registered if they are common names and/or symbols of public property." However, even though there is already a regulation regarding the invalidity of registration of the use of common words in trademarks, there are still many uses of common words as trademarks in Indonesia. This shows that there is still a lack of clarity regarding the parameters of acceptable use of generic words in trademark registration. One of the famous trademark infringement cases using a common word in Indonesia is the case between PT Unilever Indonesia, Tbk. against Hardwood Private Limited with the alleged use of the "STRONG" Trademark with the Supreme Court Decision Number 332 K/Pdt.Sus- IPR/2021. This research aims to discuss the legal action in the settlement of infringement of well-known trademarks that use the word general and the judge's consideration of infringement of well-known trademarks that use the word general based on Indonesian positive law. Based on the research results, the word "STRONG" is an English word that has a strong meaning. Then the word STRONG is a general or generic word that when referring to the explanation in Article 20 of Law No. 20 Year 2016, the word "STRONG" should not be registered as a trademark because it is a common word

ANALISIS PUTUSAN PENOLAKAN PEMBATALAN MEREK “PIERRE CARDIN”

Well-known trademarks are crucial to be protected because they are susceptible to infringement by third parties. Disputes concerning well-known trademarks are quite prevalent in Indonesia. One case involving a well-known trademark in Indonesia that is the focus of this research is the "PIERRE CARDIN" trademark case. Therefore, this research aims to investigate and analyze the "PIERRE CARDIN" trademark case based on Decision Number 15/Pdt.Sus-Merek/2015/PN.Niaga.Jkt.Pst, Decision Number 557 K/Pdt.Sus-HKI/2015, and Decision Number 49 PK/Pdt.Sus-HKI/2018. The research methodology employed is descriptive-analytical, involving an examination of legal documents and literature in the field of law. The analysis results indicate that there were inaccuracies in the judge's decision-making. The judge ruled that there was no evidence of bad faith in an individual's registration of the "PIERRE CARDIN" trademark, even though the registered trademark was the same as another individual's name and well-known trademark. The judge also made an inaccurate decision regarding the distinctiveness of the trademark. This inaccuracy in the decision could have implications for trade and investment due to the uncertainty surrounding the enforcement of protection for famous trademarks in Indonesia.

Sengketa Merek Strong dan Penggunaan Kata Umum pada Merek Dagang (Studi Putusan Mahkamah Agung 332 K/ Pdt.Sus-Hki/2021)

Trademark becomes a valuable asset owned by a company, especially if the brand has become a well-known mark. The well-known of a trademark creates a greater opportunity for deviations in the use of the brand which will eventually lead to the trademark disputes. Trademark disputes are still common in Indonesia with various problems, especially imitation of famous trademarks. The purpose of this study was to determine the decision process of the judiciary regarding the "STRONG" trademark dispute from the first level and an appeal and to see its conformity with the applicable laws and regulations and justice for the disputing parties.The approach method used in this thesis is normative juridical, namely research that uses existing legal norms and the application of these legal norms with research specifications is descriptive-analytical. The results showed that the Supreme Court in Decision Number 332 K/Pdt.Sus-HKI/2021 which stated that the considerations at the Central Jakarta Commercial Court were wrong in applying the law, had given correct considerations and decisions in accordance with applicable laws and regulations. The Defendant/Applicant for Cassation has not violated the rights to the “STRONG” trademark belonging to the Plaintiff/Respondent of Cassation. In order to be able to use a trademark in the form of a general descriptive word, it must build a secondary meaning on the trademark so that it can become a stand-alone trademark and has a strong distinguishing power. The need for additional criteria and use of trademark in the form of descriptive general words in the laws and regulations concerning trademarks in Indonesia.

Analysis of the Effect of Shared Finance Implementation in Yonghui Supermarket

Some of the retail enterprises in China are still in the traditional business model, and their financial model will not match the scale of operation and financial control ability with the development of the enterprise. Nowadays, the integration of the world economy is developing deeply, and the business between enterprises is complicated, so it is imperative to strengthen the overall control of enterprise finance. There is no doubt about the influence of the shared finance model on the control of corporate financial processes and capital management. Yonghui Supermarket is a large-scale private joint-stock enterprise group cultivated in Fujian Province to promote the transformation of traditional farmers' market to modern distribution mode. Yonghui Supermarket is one of the top 500 enterprises in China and has been honored as a "Famous Trademark of China". Founded in 2001, Yonghui Supermarket is located in Fuzhou City, Fujian Province. Yonghui is one of the first companies in China to introduce fresh agricultural products into modern supermarkets. Yonghui Supermarket Co., Ltd. is a supermarket model that combines community chain stores, specialty stores, and supermarkets as its core business, supplemented by convenience store franchising, and combines food processing and modern agriculture. This case takes Yonghui Supermarket as the research object to explore the shared finance model of retail enterprises and its effects.

The Role of Arbitration in Protection the Owner of Famous Trademark from the Degital Environment Infringment

Purpose: The aim of this study is to help consumers to move towards choosing specific goods and services that are better suited to their sense and needs by relying on the trademark of the commodity or service that has been taken as a website address for the promotion of goods or services. Theoretical Framework: The infringements on the rights of owners of famous trademarks taking addresses to e-commerce sites for the purposes of advertising and promoting goods and services offered by such websites or even bargaining the owners of famous trademarks for large amounts of money for ceding the registered website address. Arbitration has emerged as an effective means for resolving intellectual property disputes, including the ownership disputes of famous trademarks, and providing civil protection for the rights of their owners. The effectiveness of arbitration is derived from many advantages achieved by this means for the litigation parties, in particular the owner of the well-known trademark compared to litigation as an original and traditional means of resolving trademarks’ disputes. Particularly, Arbitral awards in the mentioned cases have been rendered just and fair to the extent that they support the stability of global trade. Design/Methodology/Approach: The nature of this study assumed the adoption of the descriptive analytical approach to the provisions of the arbitration and trademark legislation recently promulgated in the United Arab Emirates in comparison with provisions adopted by some of the legislation enacted in other states and provisions decided upon by international intellectual property rights organizations and conventions. Findings: The result of this study is the reputation of the trademark is a presumption of the bad faith of the owner of the website who used that trademark as a name of the website which was registered in the digital environment, while the arbitral tribunal’s direction should be towards the good faith presumption of the respondent, in the case preceding the registration of the website, and the date of registration of the trademark. Research Practical and Social Implications: The study is being prepared to address numerous challenges faced by the owners of renowned brands, including the ease of registering websites with names of such brands without conditions or regulations that prevent such abuses. Originality/Value: The value of this study is being the first study to be conducted in the UAE. Besides, the examination of the role of arbitration in protection the owner of famous trademark from the digital environment infringement adds new knowledge to the academicians.

Satan Shoes or Satan Speech? Balancing Trademark and First Amendment Rights in the Altered Authentic Goods Context

Satan Shoes or Satan Speech? Balancing Trademark and First Amendment Rights in the Altered Authentic Goods Context

Electrochemical contributions: Hans Wenking (1923–2007)

Electrochemical contributions: Hans Wenking (1923–2007)

Comparison of Famous Trademark Laws in China and Japan in International Economic Law

This article begins with the growth of Chinese and Japanese brands and introduces an overview of the legal systems of famous trademarks in the two countries. On this basis, a comparative study was made on the contents of the famous trademark systems of the two countries, such as the recognition system of famous trademarks, the individual legal protection of famous trademarks, and the defense of trademark systems. At the end of the article, which talked about the views on how to improve the legal protection of famous trademarks in China in the future.

Trademark Fame and Corpus Linguistics

Trademark law recognizes that the same word can mean different things in different commercial contexts. Legal protection might extend to two or more owners who use the same symbol (like Delta) to indicate different sources of disparate goods or services, such as airlines and faucets. Generally, only those uses that threaten to confuse consumers—the use of similar symbols on identical or related goods—are subject to legal sanction.
 But the law extends special protection to famous trademarks, not only against confusing use, but also against dilution: non-confusing use that blurs or tarnishes the distinctiveness of the famous mark. The result of protection against blurring is that the law treats the famous mark as if the sole proper use of the term in the commercial context is to designate goods and services from the famous mark’s owner.
 Protection against dilution extends only to famous marks, but courts and scholars apply differing standards for assessing fame. Nonetheless, the trend over time has been to treat fame as a threshold requiring both sufficient renown—the famous mark must be a household name—and relatively singular use.
 This article argues that corpus linguistic analysis can provide evidence of whether a mark is sufficiently prominent and singular to qualify for anti-dilution protection. Corpus linguistics detects language patterns and meaning from analyzing actual language use. This article draws data primarily from two large, publicly accessible databases (corpora) to investigate whether litigated trademarks are both prominent and unique. Courts and parties can consider frequency evidence to establish or refute prominence, and contextual evidence like concordance and collocation to establish relative singularity.
 Corpus evidence has some advantages over standard methods of assessing fame. Corpus evidence is cheaper to generate than survey evidence but may be equally probative. Corpus analysis can help right-size dilution litigation: A litigant could estimate the prominence and singularity of an allegedly famous mark using corpus evidence prior to discovery and better predict whether the mark should qualify for anti-dilution protection. Judges should be able to rely on the results of corpus analysis with reasonable confidence. Additionally, corpus evidence can show use of a mark over time, providing courts with tools to assess when a mark first became famous, a question that a survey generated for litigation cannot readily answer.

ПРАВОВА ОХОРОНА ЗАГАЛЬНОВІДОМИХ ТОРГОВЕЛЬНИХ МАРОК

This article analyzes well-known trademarks, which by their nature receive broader legal protection than ordinary trademarks. Due to significant financial investments, wide promotion, and recognition among consumers of goods or services under certain trademarks, some of such brands can become recognizable on the territory where they were originally used, as well as in other countries. Such trademarks are called commonly known marks and can be conventionally divided into well-known, famous and with reputation. The article pays special attention to the identification of each definition and the distinction between them. Certainly, such trademarks become objects of unfair competition, as third parties, without financial investment, use them in their activities, making a profit and damaging the reputation and quality of commonly known trademarks. The infringement could be a reproduction or imitation of a trademark, which indicates an associative connection with the image or semantics of a commonly known trademark used for marking homogeneous goods. This could be using an identical or similar trademark for dissimilar goods and services, or perhaps an identical or similar trademark for homogeneous goods and services, but in a different country. Therefore, to prevent the illegal and unfair use of commonly known trademarks, special protection has been established by international regulations. Accordingly, the article examines the background of well-known trademarks, famous trademarks and trademarks with a reputation and analyzes the international and national legislation governing this issue. The article also analyzes the legal protection of such categories as wellknown trademarks, famous trademarks and trademarks with reputation, their legal nature, the order of recognition.

( العلامات التجاریة بین القانون السعودی و الأردنی) (دراسة مقارنة) The trademark in the Saudi and Jordanian Law (A Comparative Study)

العلامات التجارية بين القانون السعودي و الأردني) (دراسة مقارنة) حسين بن ناصر بن محمد عقيل ال ابراهيم قسم القانون الخاص ، کلية الشريعة و القانون ، جامعة جازان ، المملکة العربية السعودية . البريد الإلکتروني :haqil@jazanu.edu.sa ملخص البحث: يهدف التجار في مختلف دول العالم من تجارتهم إلى تحقيق أکبر ربح ممکن، وذلک عن طريق جذب أکبر عدد ممکن من المستهلکين والتجار إلى سوق معين يحتوي على الکثير من البضائع المتشابه، الأمر الذي يقع معه المستهلکون في خلط کبير بين البضائع المتشابهة،مما يصعب عليهم تمييزها. لذلک،يلجأ التجار والشرکات إلى تصميم علامات تجارية خاصة توضع على منتجاتهم بهدف مساعدة المستهلکين على سهولة تحديدها وتمييزها عن غيرها من المنتجات والمشابه، وتستخدم هذه العلامة کعلامة فارقة تمييز منتجات وخدمات التجار والشرکات المختلفة. وکنتيجة لشيوع استخدام العلامات التجارية في مختلف الأسواق سواء المحلية أو الدولية، قام المنظم السعودي والأردني بصياغة أنظمة خاصة بها تنظم عملية تسجيلها وحمايتها. من هنا وجد الباحث سؤال هذه الدراسة وهو هل تختلف قوانين وأنظمة العلامة التجارية السعودية والأردنية من حيث التسجيل والحماية أم لا؟ حاول الباحث الإجابة على ذلک في مبحثين اثنين،حيث ناقش المبحث الأول ماهية العلامة التجارية وإجراءات تسجيل العلامة التجارية في السعودية والأردن. أما في المبحث الثاني ناقش الحماية القانونية للعلامة التجارية وأثارها التي وضحتها قوانين الدولتين. سواء من حيث الآثار المدنية أو الجزائية، وفي الختام خلص البحث مجموعة من النتائج والتوصيات. الکلمات الافتتاحية:العلامة التجارية ، العلامة التجارية المشهورة، الاسم التجاري، الحماية القانونية . The trademark in the Saudi and Jordanian law A comparative Study Hussain Naser Agil Al-Ebrahim Department of private law, Collage of sharia and law, Jazan University, Kingdom of Saudi Arabia 2020 E-mail: haqil@jazanu.edu.sa Abstract: The merchants around the world are intended to make the biggest profit from their trade through attracting many consumers and traders to a specific market with similar goods. The consumers became confused between similar goods and it is difficult to discern between them. The merchants and companies design special commercial trademarks on their products to help consumers to distinguish them from similar products. This mark is used as a milestone to discriminate goods and services of different merchants and companies. As a result of the common usage of trademarks, the Saudi and Jordanian organizations formulated special regulations to organize the process of their registration and protection. The question of this study is Do the laws and regulations of the Saudi and Jordanian trademark differ in terms of registration and protection or not? . We tried to answer it through two topics. The first topic discussed the nature of trademark and the procedures of registering it in K.S.A. and Jordan. The second topic discussed the legislative protection to the trademark and its implications which are clarified from both countries in terms of civil and penal effects. Finally , the research came up with a set of results and recommendations Key words : The Trademark , The Famous Trademark , The Commercial Name , The Legislative Protection.

From Audio Branding to Sound Trademark: A Comparative Study in the EU and the US

Audio branding generates high profit when it becomes a famous trademark, thus, the registration and protection of trademark is of great significance. The EU and US admitted sound trademark in advance. To analyze the criterion of registration in those two jurisdictions can provide useful legislative experience for the study of sound trademark. Based on the comparative study, we thus can identify critical factors which influence an audio branding becomes a sound trademark.

전자상거래 플랫폼에서 저명상표를 이용한 광고와 부정경쟁 행위에 관한 고찰

전자상거래 플랫폼에서 저명상표를 이용한 광고와 부정경쟁 행위에 관한 고찰

EKSISTENSI MEREK JASA TERKENAL DALAM HUKUM NASIONAL DAN INTERNASIONAL

Trademark as an Intellectual property rights is a sign to distinguish between a product of goods or services in trade activity. In Explanation part of Article 21 paragraph (1) letter b Trademark Laws 2016, famous Trademark should be considered or can be characterized by: a. basic knowledge of the community towards the Trademark; b. Trademark reputation was earned through a vigorous campaign and spacious; c. trademark registration in several countries and the company's investments in other countries. Trademark Laws does not distinguish between the well-known trademark and famous Trademark. So that both well-known and famous trademark are still referred to as well-known trademark. Legal violations of trademark can be carried out by legal effortKeywords: well-known Trademark, famous Trademark, and Legal Efforts

Trademarks and Commercial Names: Trouble Aspects of Legal Regulation

Trademarks and commercial names, their regulation drawbacks are investigated in the article. The main attention the authors pay to appearance right to trademarks and commercial names and their protection. Possibility to protect commercial names after their first using without procedure of registration that is provided by Paris Convention led to plenty claims and issues about its correct using and right owners. Also, it is forbidden to register as a trademark any sign which was ever used by any kind of entity or individual entrepreneur as a commercial name despite of how long ago it was. The law doesn’t anticipate that using should be constant and any kind of possibility to annul right on commercial name under its non-use for some period of time as it is done for trademarks (three years of non-use is the ground to annul right on trademark). Besides Ukrainian law protects name of the entity together with its legal form but exactly name, not the legal form, has an identifying role, that’s why the authors propose to provide legal norms, which will ban a possibility to register the same names for different entities despite of their legal form.
 In addition, Ukrainian and European legislation allow protecting trademarks under the ground of announcing them well known through courts. Such procedure isn’t provided for commercial names but the law doesn’t forbid to use the same commercial names by different entities in different kinds of activity. However, any entity may freely change or extend its activity without any special procedure and commercial names cannot be registered because there is no registration and even Paris Convention doesn’t provide different classes of products and services for commercial names as it is done for trademarks (Nice Classification under Nice Agreement). Ukraine has more than 25 kinds of legal forms of entities and their unions all of them may have the same name despite of kind and sphere of their activity, this leads to troubles with protection against unfair competition and troubles with identification of different entities. Thus, the authors propose to protect only registered trademarks and commercial names and to provide unique names and unique commercial names for every entity.
 Problems of domain names protection, defense against unfair competition and cybersquatting are investigated. In Ukraine exists ban for using in domain names the same or very similar signs with registered trademark in connection with the same or similar class of products and services. But there is no ban for using in domain names the same or very similar sign with existing commercial name. It needs revising both for protecting commercial name owners and consumer rights against mislead. It is also worth to provide a possibility to protest cybersquatting in meaning to protest the same with famous character or product trademark registration ones using of its sign preceded the trademark registration by another person than the person who registered it.

Trademark Protection and Bank Loan Contracting: The Evidence from the 1996 Federal Trademark Dilution Act

We construct a comprehensive database of public firms’ bank loans and trademarks to examine the role of brand names in bank financing; in particularly, we use the 1996 Federal Trademark Dilution Act (FTDA) that enhanced protection of famous trademarks as our identification strategy for a causal inference. A difference-in-differences analysis suggests that firms with more famous trademarks not only pay significantly lower interest rates, but also use more trademark collateral after the FTDA. Moreover, firms with more famous trademarks reveal lower cash flow volatility and higher profitability after the FTDA. Our empirical evidence indicates that banks indeed account for enhanced brand value in their lending decisions.

Dilution and Free Speech in the U.S., Reprise

This Chapter address the topic of trademark dilution — the additional protection granted to famous trademarks under United States (U.S.) law. In particular it considers whether either form of dilution (dilution by blurring or by tarnishment) is an unconstitutional restriction on speech in light of recent U.S. Supreme Court caselaw. I argue that dilution by tarnishment is likely unconstitutional under now-prevailing law, and that there’s at least a plausible argument that dilution by blurring is unconstitutional as well. I do not necessarily predict that courts will hold either form of dilution unconstitutional. But to avoid that conclusion, courts will have to develop distinctions that are not now apparent in the law.

DISPUTE SETTLEMENT ON THE OWNERSHIP OF TRADEMARK WITH SIMILARITY (CASE STUDY BETWEEN GUDANG GARAM VS GUDANG BARU)

One of the difficulties arising from the provisions of Law no. 15 of 2001 regarding trademark is the lack of clear guidelines to determine the criteria of a well-known and famous trademark. One of the disputes on a famous trademark was between Gudang Garam and Gudang Baru that has been settled by the Supreme Court through decision No. 162 K /Pdt.Sus-HKI/2014. Problems in this research are regarding the Legal Consequences of the Verdict of the Supreme Court Number 162 K / Pdt.Sus-Hki / 2014 and how to determine the ownership of Trademark with Similarity. The methodology of this research is normative-empirical which is the combination of normative and empirical legal research. The results show that The verdict of Supreme Court Number 162 K/ Pdt.Sus-Hki/2014 determined that as long as a trademark has been registered in Indonesia, the trademark will be given a legal protection even though the trademark has similarity with other trademark that has been famous in many other countries. This verdict is not coherence with indonesian trademark law that does not admit trademark upon a trademark with similarity. The criteria of the determination of the equation basic elements in a famous brand that is the similarity of images, phenotic, names, words, letters, numbers, color arrangement or combination of such elements.