lexus vs lexus

LEXUS VS LEXUS
( TOYOTA MOTOR CORPORATION (TMC) VERSUS SMALL TO MEDIUM COMPANIES IN USING LEXUS TRADEMARK)

By: Asana Kusnadi
29112574
Final Examination Paper of
Business Ethic and Law (MM 5001)

School of Business and Management
Institute of Technology Bandung
2013

Table of Content

1. Opening
1.1 Background
1.2 Scope of Discussion
1.3 Objective
1.4 Study Methodology
2. Literature Study
2.1 The Born of Lexus
2.2 Lexus Sales
2.3 Intellectual Property
2.4 History of Intellectual Property Right in Indonesia
2.5 Trademark
2.6 Lexus Versus Lexus
3. Analysis
4. Conclusion
5. Reference

1. Opening
1.1 Background
As a Luxury Car Trademark, it is tempting to use ‘Lexus’ brand to anything as to bring the meaning associated with it. In Indonesia back in 2011, Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corp) filed a lawsuit against PT Lexus Daya Utama for registering its trademark whose pronunciation and sound were the same as those of the company‘s trademark.

Again on the same year, Toyota also filed a suit against helmet factory Helm Jaya Iskandar for using its logo ‘L’ and the word ‘Lexus’ on its helmet. In addition to that, Toyota filed 3 other suits against companies that use the brand Lexus for various class of good such foods, metal plat, and automobile spareparts. None of these brands are registered under the same class with what Toyota’s Lexus is, yet all of these cases were won by Toyota and each of the companies shall anull their brand and use another name. Over 2 year since 2011, 5 cases have been registered and acted upon and won by Toyota Motor Corporation. These suits were based on Art. 6, cl.1. ch.2 Indonesian Brand Act 15 Year 2001

(1) Application shall be denied by the Directorate General of intellectual property rights if the brand:
a. Has similarity substantially or entirely with other trade marks that have been listed beforehand for the similar goods and or services.
b. Has similarity substantially or entirely with other trade marks that already been famous belonged to other party for the similar goods and or services
c. Has similarity substantially or entirely with already known geographical indication
(2) Provision as mentioned in clause (1) b above can also be applied towards non-similar goods and services as long as its fulfill a certain provision which will be further governed by government regulation.

That is the same law used by The Directorate General of intellectual property rights to grant all of these request of using Lexus Brand. How these case can happen repetitively and how each of the case was won by Toyota will later be discussed. Although thousand trademark was registered successfully, does this law is sufficient in giving guidance on how to grant any trademark request application, or have The Directorate General of intellectual property rights have sufficient instrument, to properly review and granting the trademark request application?

1.2 Scope of Discussion
This paper will focus on trademark dispuste between Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corp) with local company in Indonesia that suspected using the Lexus trademark over their goods and or services to riding the Lexus fame, and the role of Directorate General of intellectual property rights in that regards. This paper will not discuss in detail on the trial of each case and the argument during the trial. These paper will discuss the role of Directorate General of intellectual property, the sufficiency on the details of the Indonesian Trademark Law Number 15 Year 2001 as a regulation in association with trademark, and its relation with repetitive case of annulment by Toyota Motor Corp. Towards local companies in Indonesia.

1.3 Study Methodology
Writer uses literature study from various internet sources and papers.

1.4 Objective
To analyze the problem and give some suggestion on the current implementation

2. Literature Study
2.1 The Born of Lexus
In 1983, Eiji Toyoda, President of the world famous automobile maker Toyota Motor Corporation called his executive to discuss Toyota’s next big thing. Eiji thought, that it was time for Toyota to make a luxury automobile. His vision on the new car would be the finest luxury car in the world, offering speed, safety, comfort, elegance, dignity and beauty. The team was soon formed under the code F1 (Flagship one) to build a new model, whose finished project was later named Lexus LS 400.

Before came into Lexus, the Toyota advertising agency in 1986 developed 219 prospective names. Some of the prospective names are Vectre, Verone, Chaparel, Calibre and Alexis. Alexis became the first choice, although concerns were raised that the name applied to people more than cars (being associated with the Alexis Carrington character on the popular 1980s primetime drama Dynasty), and as a result the first letter was removed and the "i" replaced with a "u" to morph the name to Lexus.1

In 1989, after an extended development process involving 60 designers, 24 engineering teams, 1,400 engineers, 2,300 technicians, 220 support workers, approximately 450 prototypes, and over US$1 billion in costs, the F1 project was completed.. The LS 400 debuted in January 1989 at the North American International Auto Show in Detroit.2 Since then, Lexus has expanded worldwide and keep innovating.

2.2 Lexus Sales
In 2012, Lexus sold 476,566 units, up 18% jump compared to 2011. The fastest growth took place in the Middle East (50%) followed by North America (22%). Lexus vehicles were deemed the most dependable new cars the past two years in the annual study conducted by J.D. Power & Associates. Based on its annual report released March 31st 2013, Lexus sales in Asia itself ranked 2 after Japan with 92,000 units sold.
Table 1. Toyota Total sales and production3
Regional sales, 2011
Units
Japan
42,365
China
56,303
Europe
43,637
United States
198,552
Type production, 2010
Units
Passenger vehicles
205,07
Crossover SUVs
159,56
Hybrid vehicles
66,226
Line production, 2010
Units
Japan production
283,012
Canada production
81,618
Total 364.630

With is worldwide popularity, Lexus brand has been linked with luxury and elegance, as the name implied. And as ranked by the Forbes, Lexus brand values $7 Billion as of November 2013.

As the 4th most populous country on earth Indonesia's 2013 population is estimated at 250,585,6684. With estimated GDP annual growth rate 5%, Indonesia is a great market for Toyota Motor Corp. Indonesia.
Table 2. Indonesia Car Sales History 2008 - 2012 2008 2009 2010 2011 2012
Indonesia's Car Sales 607,805 486,061 764,710 894,164
1,116,230
(number of car units)

Table 3. Indonesia Car Sales 2012 - 2013 Q3-2012 Q3-2013
(as of Oct 21st 2013) Growth (yoy)
Indonesia's Car Sales 816,317 909,729 11.44%
(number of car units)

Source: http://www.indonesia-investments.com
As per October 2013, total 909,729 units car, up 11% comparted to 2012 were sold . This confirms 2013 will be another record year for new car sales in Indonesia. And as per indicated in Table 4 below, out of top ten car sales, 7 of them are a product of Toyota.
Table 4. Top ten Indonesia Car Sales 2012 - 20135
Rank
Model
Sep's sell
%
Jul's Rank
2013
1
Toyota Avanza
20066
17.3%
1
164928
2
Suzuki Ertiga
601
5.2%
2
51301
3
Daihatsu Xenia
5
4.3%
3
53548
4
Toyota Kijang Innova
4997
4.3%
4
50506
5
Suzuki Carry Pick-up
4699
4.1%
5
34712
6
Daihatsu Ayla
4377
3.8% -
4377
7
Toyota Agya
4123
3.6% -
4123
8
Daihatsu Gran Max Pick-up
4119
3.6%
7
35953
9
Nissan Grand Livina
3691
3.2%
8
2986
10
Toyota Rush
356
3.1%
11
26652

While the above number from table 2 is from regular car, the sales from the luxury car in Indonesia also important. In Indonesia, Lexus sales target has been increasing years after years from 450 units in 2011 to 600 units in 2013.

Picture 1. Lexus Logos number from table 2 is from regular car, the sales from the luxury car in Indonesia also important. In Indonesia, Lexus sales target has been increasing years after years from 450 units in 2011 to 600 units in 2013. Based on the survey that is conducted by www.topbrandsandproducst.com, Lexus is listed in #10 as a luxury car. The rank was written based on popularity, reliability, cost, variety, comfort, luxurious interiors, and many more. And based on www.goodcarbadcar.net statistic, Lexus grabs almost 16% market of luxury car in America as per July 2013.

Picture 2. Luxury Auto Market Share in America as per July 13 % There is no doubt that Lexus popularity and famous as luxury car worldwide, as well as in Indonesia. This is a popular brand that Toyota Motor Corporation keep its good name and reputation, by having its trademark registered around the globe where the car is sold to prevent from dilution.

2.3 Intellectual Property Intellectual property (IP) is a legal concept which refers to creations of the mind for which exclusive rights are recognized6. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Intellectual property rights include copyright, trademarks, patents, industrial design rights, trade dress, and trade secrets. Copyright works are protected across most mediums - so if they're protected in one, they're probably protected in others. It may then be copyright infringement if you create a painting from someone else's photograph or make a sound recording of someone else's book without their permission7 A patent is a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time, in exchange for the public disclosure of the invention. An invention is a solution to a specific technological problem, and may be a product or a process. Patents are a form of intellectual property.8

2.4 History of Intellectual Property Right in Indonesia In Indonesia, legislation on Intellectual property right had been available since 1840s. Dutch Colonical government introduced Pemerintah Kolonial Belanda the protection towards intellectual property right in 1844, which later outlined in Trademark law (1885), Patent law (1910), and copyright law (1912). At that time, Indonesia had been part of Paris Convention for the Protection of Industrial Property since 1888 and member of Berne Convention for the Protection of Literary and Aristic since 1914. When Indonesia declared its independence in 17 Agustus 1945, all law and regulations derived from Dutch Government still applies as long its not conflicts with UUD 1945. Copyright still applied, but not with patent law which was states that all patent application review shall be done in Dutch. In 1953, The Ministry Justice of Republic of Indonesia (RI) issued an announcement which considered the first national regulation device that regulate about patern. On 11 October 1961, RI Government issued UU No. 21 tahun 1961 about company and merchant trademark (trademark law 1961) to replace Dutch colonial trademark law. This law is the first Indonesian law that govern the Intellectual Property Right to protect public from pirated or artifical goods took effect since 11 November 1961. In 12 April 1982, Government ratified Law No.6 year 1982 about Intellectual Property Right (Copyright Law 1982) to replace the old one from the Dutch Government. This law was meant to leverage and protect the creation and dissemination of results of scientific works in the fields of culture, art and literature as well as accelerate growth in the life of the nation's intelligence. In 23 July 1986, RI President established special team in the field of Intellectual Property Right through President decree No. 34/1986 with its main task to form national policy, draft the legislation, and socialization of intellectual property right in associated government agencies, law enforcement team, as well as public. This team later came up with breakthrough in national patent systems. In 1989, this patent law was successfully approved by the government.

In 19 September 1987, RI Government legitimated the No. 7 year 1987 as replacement for law No. 12 year 1982 about copyright as a response to the increasing case of copyright infringement that harms the society life and creativity. In 1988, as per President decree No 32, The Directorate General of Copyright, Patent and Trademark (DJ HCPM) was form to take over the function and responsibility of The Directorate General of Patent and Copyright as one of Eselon Unit II in The Directorate General of Law & Legislation, Department of Justice. In 13 October 1989, The House of Representatives approved the the legislation plan for Patent Law which later approved by the President to become the Law No. 6 year 1989 (Patent Law 1989) and took effect on August 1st 1991. This patent was deemed very important to attract foreign investors, national development, and technology advancement. On 2000, 3 new law in intellectual property was ratified: Law No. 30 year 2000 about trade secret, Law UU No. 31 year 2000 about industry design, and Law No 32 Year 2000 about tentang Layout Design of Integrated Circuits.

Basically, Intellectual property right is divided into 2 main parts:
1) Copyright (Hak Cipta)
2) Industrial property rights (Hak kekayaan industri), which covers:
a. Patent (paten)
b. Industrial design (Desain industri)
c. Trademark (Merek)
d. Repression of unfair competition (Penanggulangan praktek persaingan curang)
e. Layout design of integrated circuit (Desain tata letak sirkuit terpadu)
f. Trade secret (Rahasia dagang).

2.5 Trademark
1. Understanding and Legal Basis A mark is sign in a form of pictures, names, alphabets, numbers, arrangement of color or a combination of those elements that has a power of distinction which identifies products or services of a particular source from those of others. Whereas trademark, is a mark that is use in traded goods by individual, organization, or legal entity to distinct one product over another. Service Mark, is then a mark that is used in services that is traded by individual, organization, or legal entity to distinct one services over another. A Mark can be registered by individuals, collective, or by a legal entity (CV, firm, corporation, etc). All of these trademark is protected under Indonesia Law of Mark Number 15 Year 2001. Collective mark, is mark used in goods and or services with same characteristic of those traded with groups of individuals or legal entity together to distinct over the same goods and or services Mark funtions as a recognitive sign to distinct products/services by individuals, collective, or legal entity with other products/services made by other individuals, collective or legal entity. Mark also functions as a promotion media by mentioning mark on its promotion, guarantee of the product’s quality, as well as to show where the product/service is coming from. A mark, be it trademark or service mark need to be registered, to be legally recognized or admitted. The objective for this registration is:
As a prove that the owner of the registered mark is entitled to rights upon mark they register
As the basis for the rejection of the same brand with whole or substantially the same which other parties’s mark
As a basis to prevent other using the same brand be it as a whole or substantially the same over the same product A mark or brand owner has a right to give license to other parties with an agreement that the license will use that mark for either substantially or as whole over a products or services. This license agreement shall be recorded by The Directorate General of Intellectual Property Rights with a certain fee and subject to legal consequences of the license agreement record towards associated parties as well as third party.

2. The scope of a mark A trademark cannot be registered if it meets one of more of the following criteria:
Registered by an applicant that are not well intentioned
Against the law and legislation, religious morality, decency or public order
Does not have power of distinction
Belongs to public
A description or relating to goods or services which petitioned listing Several things that cause a brand application rejected by The Directorate General of Intellectual Property Rights are:
Have similarity in substantially or entirely with a brand owned by other parties who have been registered in advance for similar goods and/or services
Have similarity in substantially or entirely or substantially with an already famous trademark belongs to the other party for similar goods and or services
Have similarity in substantially or entirely with an already famous trademark belongs to the other party for non-similar goods and/or services as long as it meets certain requirements which are applied by government regulations
Have similarity in substantially or entirely with the already-known geographical indications
Resemble the name of famous people, photos, or the name of a legal entity that is owned by another person, unless under the written consent from the eligible
Copycats or resembles the name or abbreviation of name, flag, emblem or symbol or emblem of State or national or international institutions, except upon the written consent from the authorities
Copycats or resembles a mark or stamp or an official stamp that is used by the State or Government agencies, unless upon explicit consent from the authorities The registered trademark can be written off with the following reason:
Upon the initiative of The Directorate General of Intellectual Property Rights
Upon the request of the owner of the associated brand
Upon the court ruling based on abolishment lawsuit
Non-extended period of trademark registration Basis for writting off the trademark registration are:
The trademark has not been used for 3 years in a row for a product or services trading since the last registration date or last usage, unless there is a reason that can be accepted by The Directorate General of Intellectual Property Rights such as: import ban, the ban with regard to permission for the circulation of goods using the corresponding brands or the decision from the authorities that are temporary, or other similar restrictions imposed by government regulation.
The trademark is used for the type of goods and/or services which are not in accordance with the type of goods and/or services upon which the application is registered including the use of trademark that is not in accordance with its registration. Bagian Kedua
Merek yang Tidak Dapat Didaftar Dan yang Ditolak

Pasal 4
Merek tidak dapat didaftar atas dasar Permohonan yang diajukan oleh Pemohon yang beritikad tidak baik.
Pasal 5
Merek tidak dapat didaftar apabila Merek tersebut mengandung salah satu unsur di bawah ini:
a. bertentangan dengan peraturan perundang-undangan yang berlaku, moralitas agama, kesusilaan, atau ketertiban umum;
b. tidak memiliki daya pembeda;
c. telah menjadi milik umum; atau
d. merupakan keterangan atau berkaitan dengan barang atau jasa yang dimohonkan pendaftarannya.
Pasal 6
(1) Permohonan harus ditolak oleh Direktorat Jenderal apabila Merek tersebut:
a. mempunyai persamaan pada pokoknya atau keseluruhannya dengan Merek milik pihak lain yang sudah terdaftar lebih dahulu untuk barang dan/atau jasa yang sejenis;
b. mempunyai persamaan pada pokoknya atau keseluruhannya dengan Merek yang sudah terkenal milik pihak lain untuk barang dan/atau sejenisnya.
c. Mempunyai persamaan pada pokoknya atau keseluruhannya dengan indikasi-geografis yang sudah dikenal.
(2) Ketentuan sebagaimana dimaksud pada ayat (1) huruf b dapat pula diberlakukan terhadap barang dan/atau jasa yang tidak sejenis sepanjang memenuhi persyaratan tertentu yang akan ditetapkan lebih lanjut dengan Peraturan Pemerintah.
(3) Permohonan juga harus ditolak oleh Direktorat Jenderal apabila Merek tersebut:
a. Merupakan atau menyerupai nama orang terkenal, foto, atau nama badan hukum yang dimiliki orang lain, kecuali atas persetujuan tertulis dari yang berhak;
b. Merupakan tiruan atau menyerupai nama atau singkatan nama, bendera, lambang atau simbol atau emblem negara atau lembaga nasional maupun internasional, kecuali atas persetujuan tertulis dari pihak yang berwenang;
c. Merupakan tiruan atau menyerupai tanda atau cap atau stempel resmi yang digunakan oleh negara atau lembaga Pemerintah, kecuali atas persetujuan tertulis dari pihak yang berwenang.

Bagian Keenam
Permohonan Banding
Pasal 29
(1) Permohonan banding dapat diajukan terhadap penolakan Permohonan yang berkaitan dengan alasan dan dasar pertimbangan mengenai hal-hal yang bersifat substantif sebagaimana dimaksud dalam Pasal 4, Pasal 5 atau Pasal 6.
(2) Permohonan banding diajukan secara tertulis oleh Pemohon atau Kuasanya kepada Komisi Banding Merek dengan tembusan yang disampaikan kepada Direktorat Jenderal dengan dikenai biaya.
(3) Permohonan banding diajukan dengan menguraikan secara lengkap keberatan serta alasan terhadap penolakan Permohonan sebagai hasil pemeriksaan substantif.
(4) Alasan sebagaimana dimaksud pada ayat (3) harus tidak merupakan perbaikan atau penyempurnaan atas Permohonan yang ditolak.

Pasal 30
(1) Permohonan banding diajukan paling lama dalam waktu 3 (tiga) bulan terhitung sejak tanggal surat pemberitahuan penolakan Permohonan.
(2) Apabila jangka waktu sebagaimana dimaksud pada ayat (1) telah lewat tanpa adanya permohonan banding, penolakan Permohonan dianggap diterima oleh Pemohon.
(3) Dalam hal penolakan Permohonan telah dianggap diterima sebagaimana dimaksud pada ayat (2), Direktorat Jenderal mencatat dan mengumumkan penolakan itu.

Pasal 31
(1) Keputusan Komisi banding Merek diberikan dalam waktu paling lama 3 (tiga) bulan terhitung sejak tanggal penerimaan permohonan banding.
(2) Dalam hal Komisi Banding Merek mengabulkan permohonan banding, Direktorat Jenderal melaksanakan pengumuman sebagaimana dimaksud dalam Pasal 21, kecuali terhadap Permohonan yang telah diumumkan dalam Berita Resmi Merek.
(3) Dalam hal Komisi Banding Merek menolak permohonan banding, Pemohon atau Kuasanya dapat mengajukan gugatan atas putusan penolakan permohonan banding kepada Pengadilan Niaga dalam waktu paling lama 3 (tiga) bulan terhitung sejak tanggal diterimanya keputusan penolakan tersebut.
(4) Terhadap putusan Pengadilan Niaga sebagaimana dimaksud pada ayat (3) hanya dapat diajukan kasasi.

Pasal 32
Tata cara permohonan, pemeriksaan serta penyelesaian banding diatur lebih lanjut dengan Keputusan Presiden.

Bagian Ketujuh
Komisi Banding Merek
Pasal 33

(1) Komisi Banding Merek adalah badan khusus yang independen dan berada di lingkungan departemen yang membidangi hak kekayaan intelektual.

(2) Komisi Banding Merek terdiri atas seorang ketua merangkap anggota, seorang wakil ketua merangkap anggota, dan anggota yang terdiri atas beberapa ahli di bidang yang diperlukan, serta Pemeriksa senior.
(3) Anggota Komisi Banding Merek sebagaimana dimaksud pada ayat (1) diangkat dan diberhentikan oleh Menteri untuk masa jabatan 3 (tiga) tahun
(4) Ketua dan wakil ketua dipilih dari dan oleh para anggota Komisi Banding Merek
(5) Untuk memeriksa permohonan banding, Komisi Banding Merek membentuk majelis yang berjumlah ganjil sekurang-kurangnya 3 (tiga) orang, satu di antarnya adalah seorang Pemeriksa senior yang tidak melakukan pemeriksaan substantif terhadap Permohonan.

2.6 Lexus Versus Lexus In Indonesia, Toyota Motor Corporation (TMC)’s Lexus trademark has been registered in various classes such classes 6, 12, 18, 25, 36, 37 and 39 with goods and services starting from cars and its spare parts, rental services, maintenance services, insurance, and many Lexus promotional goodies such stationery, wallet, etc. This recent registration isn’t new. Toyota first register their Lexus on May 25th 1992 No.275.609 which renewed again on May 25th 2012. The following will discuss each case from different company that faced lawsuit appealed by Toyota for using their Trademark

Case 1: TMC VS Budi’s Lexus In early November 2010, Toyota filed a lawsuit 52/merek/2010/PN.NIAGA.JKT.PST against local company producing energy drinks, mineral water, and juices. Lexus as a car and drinks are registered under different classes. While the Lexus car registered under Class 12, the Lexus Juices and drinks was registered under class 32 and produced in Batam. Lexus as a car was registered first in 1992 and regularly renewed, while Lexus Juices and drinks was registered by Budi, the owner, on October 13th 2009. During this research, the logo of Lexus as Juices no longer available in website through search engine result, as well as in Directorat General Intellectual Property Rights (DJHKI). So the analysis on the resemblance partially or entirely can not be proved nor discussed. However, in many article throughout the internet, Lexus demands Budi’s Lexus to be withdraw and cancelled as it is suspected that Budi intention was not well intentioned, and using’s Lexus popularity to boost Lexus’s drinks sales. The suit was successfully won by the Toyota. Court counselor stated that defendant (Budi’s Company), have violated cl. 1, Art. 6, ch.2, of Indonesian Trademark Law 15 Year 2001 that Budi’s Lexus has similarity substantially or entirely with other trade marks that have been listed beforehand for the similar goods and or services, which is Toyota’s Lexus. No statement was released from Budi’s Law Defendant. But Budi’s Lexus later on was cancelled.

Case 2: TMC VS Lexus Daya Utama

The next year in 2011, Toyota again filed a lawsuit No.71/MEREK/2010/PN.NIAGA.JKT.PST against PT. Lexus Daya Utama (PT. LDU) for registering trademark Lexus that has the identical form thereof or in such near resemblance thereto as to be likely with spells and words with Toyota’s Lexus. Toyota’s Lexus was registered under class 12, while PT.LDU’s Lexus registered under class 9 to protect computer parts, software, disk, PC computer supply, monitor, disk drive, mouse, keyboard, computer, USB, UPS, memory computer, notebook, CD/DVDROM drive, and CD/DVDRW drive. PT.LDU’s Lexus was registered in DJHKI since 11 January 2010. Toyota Lawsuit was based on article 4 and article 6 of Law No. 15 of 2001 on Marks. Based on the spelling and the words only, both Lexus-es are the same. On DJHKI website, there is still Lexus trademark under class 9, although the registration number is different with those referred in the various article related to this case. The Registration number is also different, which indicate that PT. LDU may had registered Lexus under several classes. However, Toyota’s Mark Cancellation lawsuit was denied by the judge based on the following:
The two marks was registered under different classes
Toyota was also not able to prove the fame of its Lexus trademark. It is because the proof of registration of the Lexus trademark in many countries was only photocopies, so that the power of evidence was in doubt.9
Although not detail was outlined on what article and clause did the Toyota base its argument, it may use the same with those in the case 1 against Budi. This decision was a surprised for Toyota, who won the similar case earlier (See Case 1). Following the rejection, Toyota filed casastion to the supreme court with number 194 K/PDT.SUS/2011. This cassation was won by Toyota, with the Supreme Court granted the appeal filed by Toyota Jidosha Kabushiki Kaisha in the annulment of the Lexus trademark registered in the name of PT Lexus Daya Utama. Supreme Court cancelled the decision of the Central Jakarta Commercial Court earlier which rejected the lawsuit filed by Toyota against the software company.

Case 3: TMC VS Helm Jaya Iskandar In the same year of 2011, Toyota filed another lawsuit with number 26/Merek/2011/PN.Niaga.JKT.PST against helmet maker Helm Jaya Iskandar (HJI) for registering trademark Lexus. It is suspected that HJI intention was not well intentioned and that the Helmet’s Lexus has the identical form thereof or in such near resemblance thereto as to be likely with spells and words with Toyota’s Lexus. In addition to that, helmet is a product of automotive industry, which may cause further confusion with Toyota’s Lexus mark as a car. Lexus’s Helmef of Helm Jaya Iskandar was register No IDM000255545 tanggal 30 Juni 2010 for helmet, glasses for workers. In its Defense, Toyota showcased 16 written evidences in form of certificate that shows Toyota’s Lexus mark has been registered in numbers of Country and thus, fulfill the term ‘famous'. For the clear and undoubted argument, completed and supported by 16 written statement Toyoto won the lawsuit and HJI should change the helmet name other than Lexus.

Case 4: TMC Versus Stanley Ang’s Lexus HPS 102 In 2012 Toyota again faced another Lexus profiteering, and for the 4th time Toyota filed lawsuit with number 52/Merek/2012/PN.Niaga.Jkt. against Stanley Ang and his trademark Lexus HPS 102. Stanley’s Lexus HPS 102 was registered with No. IDM000327157 on Oktober 25th 2011 under class 6 to protect product such zinc plate for publishing purpose, iron sheet and iron wire. Toyota’s argued that Stanley Ang was not in well intentioned when registering the product with Lexus HPS 102 and tried to ride Toyota’s Lexus popularity. Again, Toyota claim that Lexus was already a famous trademark. Stanley Ang legal representative defended that the client did not know that Lexus was already a known trademark and that was the first time he ever heard about Toyota’s Lexus. This case was won by Toyota, as a holder of special rights towards Lexus trademark. The Judge decision was based on an argument that Stanley’s Lexus has similarity on its basis on words and spelling with Toyota’s Lexus. And thus, it was concluded that Stanley is proven to may have ride Toyota’s popularity. This decision also is strengthen by the fact that Toyota’s Lexus was registered first. Things that were noted by Toyota’s Lawyer was that the judges did not take the proposition that the plaintiff served, that Toyota’s Lexus is already a famous trademark, which was proven that it had already been sold in countries worlwide including Africa and Indonesia.

Case 5: TMC Versus Lie Sugianto’s Lexus Still on 2012, Toyota faced another Lexus profiteering, and for the 5th time Toyota filed lawsuit with number 89/Merek/2012/PN.Niaga.Jkt.Pst. against Lie Sugianto from a local company. Lie’s Lexus was registered under class 9, while Toyota’s Lexus under class 12. Lie’s Lexus was registered in DJHKI on March 11th 2011 to protect product such switch, fitting, electrical instrument, etc. Toyota’s argued that Lie’s Lexus has the identical form thereof or in such near resemblance thereto as to be likely with spells and words with Toyota’s Lexus and may lead the customer to assume that they’re have a connection to each other. Toyota also suspect that Lie intention was not well intentioned and using’s Lexus popularity to boost the sales. In this case, not only Lie was suit, but also DJHKI. During the trial, DJHKI representative argued that Lie’s registration was already complied with Art. 4,5, and 6, ch.2, of Indonesian Trademark Law 15 Year 2001 and claimed that Lie’s Lexus was in different class with Toyota’s class and therefore unlikely to be related to each other. This case was won by Toyota Jidosha Kabushiki Kaish, and therefore Lie Sugiarto need to rebrand his product. Court argued that Lexus has been registered first, and look that Lie was not well intentioned and ride Toyota’s Lexus popularity, and consumer may linked Lie’s Lexus to Toyota’s Lexus. Aside from five above case above, there are about 10 Lexus trademark listed in the DJHKI with various logos, but have the same principal similarity on spelling and words. Out of 10 trademark, 2 of them are Lie’s Sugiarto Lexus, which are registered under classes 9 and 11, which apparently still legally listed on DJHKI.

(a) (b)
Picture 4.(a) Lie Sugiarto’s Lexus (b) Toyota’s Lexus
3. Analysis Toyota fights against company that keep using Lexus trademark has not finished yet. In Case 5 where Toyota VS Lie Sugiarto, it was very apparent that Lie Sugiarto’s Lexus intention was not well, as proven by the court (refer to picture 4 as Lie’s Lexus have a resemblance with Toyota’s Lexus). In this case, Toyota case was very solid, and Lie’s had proven to be violating article 4 and article 6 of Law No. 15 of 2001 on Marks, in which, Has similarity substantially or entirely with other trade marks that have been listed beforehand for the similar goods and or services and proven to have no good intention.
Article 4
Trademark cannot be registered based on application by the applicant with not good intention
Article 6
(1) Application shall be denied by the Directorate General of intellectual property rights if the brand:
a. Has similarity substantially or entirely with other trade marks that have been listed beforehand for the similar goods and or services.
b. Has similarity substantially or entirely with other trade marks that already been famous belonged to other party for the similar goods and or services
c. Has similarity substantially or entirely with already known geographical indication
(2) Provision as mentioned in clause (1) b above can also be applied towards non-similar goods and services as long as its fulfill a certain provision which will be further governed by government regulation.

However, i f we take a look closer, in Case 1 (Toyota VS Budi), the court decision by saying that Budi violated Article 6 clause 1 is not entirely true, since the law itself only meant for similar goods/services (unless the Lexus brand is proven to be famous during the trial), while Budi’s good’s class was in another class from Toyota’s Lexus (Budi’s Lexus in class 32, and Toyota’s Lexus in class 12). While the other basis that Budi’s violated article 4 may be true, since it was proven in the court Budi’s have no good intention by using Toyota’s Lexus Popularity. In this court, Toyota’s Lexus famous was not in the talk; and therefore clause (1) b may not be used to decide against Budi.

In Case 2 (Toyota VS PT.LDU), the judge decision in commercial court was probably the most logical if referring to Law 15 Year 2001. The Judges said, that since PT.LDU’s trademark is registered in different class (PT.LDU’s Lexus in class 9, and Toyota’s Lexus in class 12), and the fame of Toyota’s Lexus cannot yet be proven, court decided for PT.LDU to keep its Lexus Trademark. Toyota later on pursued appeal to supreme court and won the case. The supreme court stated in the its statement that Toyota holds ‘Special rights’ upon Lexus Trademark and therefore entitle to sole rights to use the trademark in Indonesia. It is very important to be noticed that the term ‘sole right’ has nowhere to be seen in Law 15 Year 2001. If it refers to Patent Law, the term used would be ‘exclusive right’ in which refers to trade activities, and have no relation with the use of trademark as one of the patent’s holder right.
Hak dan Kewajiban Pemegang Paten
Pasal 16

(1) Pemegang Paten memiliki hak eksklusif untuk melaksanakan Paten yang dimilikinya dan melarang pihak lain yang tanpa persetujuannya;
a. Dalam hal Paten-produk: membuat, menggunakan, menjual, mengimpor, menyewakan, menyerahkan, atau menyediakan untuk dijual atau disewakan atau di diserahkan produk yang diberi Paten;
b. dalam hal Paten-proses: menggunakan proses produksi yang diberi Paten untuk membuat barang atau tindakan lainnya sebagaimana dimaksud dalam huruf a.
(2) Dalam hal Paten-proses, larangan terhadap pihak lain yang tanpa persetujuannya melakukan impor sebagaimana dimaksud, pada ayat (1) hanya berlaku terhadap impor produk yang semata-mata dihasilkan dari penggunaan Paten-proses yang dimilikinya.
(3) Dikecualikan dari ketentuan sebagaimana dimaksud pada ayat (1) dan ayat (2) apabila pemakaian Paten tersebut untuk kepentingan pendidikan, penelitian, percobaan, atau analisis sepanjang tidak merugikan kepentingan yang wajar dari Pemegang Paten.

In Case 3 (Toyota VS Helm Jaya Iskandar), Toyota equipped itself with 16 statement copy to show its fame, so it can be used against violation towards Article 6 clause 1 (b) and therefore may applies to any goods in any classes that use the Lexus brand. Although no clear information of the basis of the Judge decision, again what can be proven in the court was the no-good intention of PT.LDU. The fame of Lexus Trademark was again not proven in the court.

In Case 4 (Toyota VS Stanley Ang), Toyota base its claim on the unavailability of good intention by Stanley Ang, and violation against Article 6 clause (1)b. Again Toyota Won, and again by the basis that Stanley Ang was proven had no good intention and meant to ride Toyota’s Lexus Popularity. Another basis for the judge to grant Toyota’s claim, is that Toyota’s trademark was registered first since 1992 and Stanley’s Lexus was registered later. This argument is added to the logical that with 20 years time span, the more possible for Toyota’s Lexus becoming famous. But as complained by Toyota’s legal representative, none of proof of Toyota fame submitted by him was taken into acount by the Judge in making the decision. And therefore Toyota’s Lexus fame again unproven in court.

In Case 5 (Toyota VS Lie Sugianto), Similar with previous case, Court grant Toyota’s suit over the basis of no-good intention by Lie and Toyota’s Lexus was registered earlier. But this time, not only Lie was sued, but also The Directorate General of Intellectual Property Rights. No information was provided on What basis does Toyota’s sue the DJHKI.

Looking at Toyota Perspective, its concern towards trademark dilution was solid. Especially on Case 2 and case 5, where the other product (helmet, electrical appliances) may be easily related to Toyota’s Lexus. In the Case 5, Lie even used almost the same logos and brand (Lexus and ‘L).

Toyota had even experienced it back in 1989, when Toyota was the one faced lawsuit by Mead Data Central. The complaint alleges that Toyota's use of the LEXUS mark will likely dilute the LEXIS mark, under the meaning of New York's antidilution statute, N.Y.Gen. Bus.Law § 368-d. The complaint also alleges that the planned use of the LEXUS mark will cause a likelihood of confusion among consumers creating a false impression of the origin of the goods 10. The case ended with Toyota will be allowed to continue to use the LEXUS name in connection with its automotive products, but Toyota should be restrained from competing directly or indirectly with Mead in the provision of computerized information, computer hardware and computer software for as long as Mead continues to be engaged in such businesses.

Toyota’s lawsuit may not end with Mr. Lie’s case, as mentioned earlier, there are so many ‘Lexus-es’ with classes other than what Toyota’s Lexus own. Toyota has a right to be protected from other Lie as constituted in Article 4,5 and 6 of trademark Law Number 15 Year 2001. And this right can only be exercised with DJHKI as Law Device carefully review each mark application, without sacrificing the opportunities for medium and low business to grow.

Another Law Device is the Law itself. Trademark Law 15 Year 2001 has some degree of openness when it comes to interpretation. This can be a good thing when exercise properly during the trial. But the detail it contains may require revisit as well. Compared to the same Law in the United States of America, the role of trademark application verifier is vividly described and emphasized. This can be adoptable with the application verifier to be held accountable.

5 USC § 1051 - Application for registration; verification

(a) Application for use of trademark
(1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director
(2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify that—
(A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
(B) to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate;
(C) the mark is in use in commerce; and
(D) to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall—
(i) state exceptions to the claim of exclusive use; and
(ii) shall [1] specify, to the extent of the verifier’s knowledge—
(I) any concurrent use by others;
(II) the goods on or in connection with which and the areas in which each concurrent use exists;
(III) the periods of each use; and
(IV) the goods and area for which the applicant desires registration.
(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
(b) Application for bona fide intention to use trademark
(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
(2) The application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
(3) The statement shall be verified by the applicant and specify—
(A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
(B) The applicant’s bona fide intention to use the mark in commerce;
(C) that, to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate; and
(D) that, to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.

When the application is verified thoroughly its resemblance towards its predecessors, this may prevent repetitive case just like toyota had. It can also urge the sense of creativity, that small and medium industry are motivated to create their own brand, instead of riding the existing one. This is also a right that small and medium have, that they also being protected by larger, already-established brand that they may not know of. When DJHKI exercise filtering not only major company, but also new starter company will also protected against the larger one. This may later boost trust and improvement economic development. Trust will engage foreign investor without being afraid of infringement or dilution, while the small company are encouraged to be unique, creative in a truthful, legal way.

Five consective (and may be more to come) case faced by Toyota is not a good sign of a good law being exercised. Toyota moves in suing DJHKI on the fifth case is therefore, understandable, and maybe should be done earlier.

4. Conclusion

1. In the Case Toyota Motor Corporation (TMC) versus Budi, Toyota won on the basis of Budi having no good intention by using Toyota’s Lexus Popularity. Budi was proven in violation towards Article 4 Trademark law 15 Year 2001.
2. In the Case TMC versus PT.LDU at level of commercial court, the judge decision based on Toyota claim was true to Trademark law 15 Year 2001, since PT.LDU’s trademark is registered in different class (PT.LDU’s Lexus in class 9, and Toyota’s Lexus in class 12), and the fame of Toyota’s Lexus cannot yet be proven. In the case TMC Versus PT. LDU at Supreme Court level, TMC won on basis that Toyota holds ‘Special rights’ upon Lexus Trademark and therefore entitle to sole rights to use the trademark in Indonesia. Supreme court argument was unfounded by any law (either Trademark law nor Patent Law).
3. In the case TMC versus Helm Jaya Iskandar, TMC won on the basis that PT.LDU having no good intention by using Toyota’s Lexus Popularity. The fame of Lexus Trademark was again not proven in the court.
4. In the case TMC versus Stanley Ang, TMC won over the basis that Stanley Ang was proven had no good intention and meant to ride Toyota’s Lexus Popularity. And that Toyota’s trademark was registered first since 1992 and Stanley’s Lexus was registered later.
5. In the case TMC versus Lie Sugianto, TMC won over the basis of no-good intention by Lie and Toyota’s Lexus was registered earlier.
6. Article 6, Clause (1) (a) can only be used against those whose products/services similar, or in this case, within the same class. If the products/services that suspected against it is in different class, article 6, clause (1) b can be used, as long as the popularity of the goods/services being object to copycats can be proven.
7. Indonesian court may want to adopt or exercise some ways to prove a products/services popularity by using metric such sales record across the world, consumer survey in which the alleged copycat product/services were marketed, the extend of advertisement and sales records.
8. In order for the Trademark law to protect publics (be it small, medium, or major company or new starters), The Directorate General of Intellectual Property Rights shall hold accountable and truthful as a medium between the law and the public or user. The repetitive case between TMC and its defendants proves that there is diverse interpretation of the trademark law and how its gap is used to boost new starters in small or medium business.
9. Grey area that subject to interpretation of parties shall be cleared and detailed to prevent misused and degrade the Indonesian law in the international community, especially foreign investors.
10. The role of reviewer during the trademark application can protect smalls businesses as well as big player
11. A consistent and truthful implementation towards law is very important in boosting economic growth and stability, since it may develop foreign trust to invest in Indonesia and not being afraid of any misused.

5. Library http://www.dgip.go.id/ http://www.lexus.com/contact/faqs/corporate_info4.html http://www.toyota-global.com/investors/ir_library/annual/pdf/2013/ar13_e.pdf http://en.indonesiafinancetoday.com/read/21039/Lexus-Targets-S300-Units-Sales-in-First-Half http://www.forbes.com/companies/lexus/ http://images.mileone.com/Matt/mwlogos/Lexus/LexusBrandGuideline.pdf http://www.thejakartaglobe.com/archive/lexus-indonesia-unveils-4-new-models-aims-for-30-growth-in-2012/ http://www.tradingeconomics.com/indonesia/gdp-per-capita-ppp http://bestsellingcarsblog.com/2013/10/21/indonesia-september-2013-daihatsu-ayla-toyota-agya-both-in-top-7/ http://fontmeme.com/images/Lexus-Logo.jpg http://usnews.rankingsandreviews.com/cars-trucks/rankings/Luxury-Large-Cars/ http://topbrandsandproducts.com/2013/10/08/top-10-luxury-car-brands-and-some-of-their-best-luxury-cars/ http://www.goodcarbadcar.net/2013/08/america-best-selling-luxury-vehicles-july-2013-sales-figures.html http://en.wikipedia.org/wiki/Intellectual_property http://merek-indonesia.dgip.go.id/detail.php?aplnumber='D002003020237' http://news.wandco-ip.com/toyota-failed-to-cancel-local-lexus-trademark/ http://news.detik.com/read/2011/06/08/120745/1655720/10/1/lexus-lindas-helm-merek-lexus http://www.hukumonline.com/berita/baca/lt4dc0bdd9c6b41/lagi-toyota-gugat-merek-mobil-wahnya http://nasional.kontan.co.id/news/toyota-menang-sengketa-merek-lexus http://news.bisnis.com/read/20130318/16/4067/sengketa-merek-lexus-toyota-gugat-lie-sugiarto http://sengketabisnis.wordpress.com/2012/12/04/toyota-ajukan-pembatalan-merek-lexus-hps-102/#more-135 http://skalanews.com/berita/detail/140904/Toyota-Gugat-Merek-Lexus http://skalanews.com/berita/detail/140904/Toyota-Gugat-Merek-Lexus http://www.atmajaya.ac.id/web/KontenUnit.aspx?gid=berita-unit&ou=hki&cid=berita-sengketa-merek http://sengketabisnis.wordpress.com/2013/04/10/toyota-motor-gugat-pemegang-merek-lexus-di-indonesia/ http://www.halojepang.com/industriteknologi/6357-lexus http://nasional.kontan.co.id/news/toyota-menangkan-gugatan-merek-lexus http://konsultanbpom.com/news.php?idn=58 http://www.hukumonline.com/berita/baca/lt4ccfb131248cb/merek-lexus-tetap-milik-toyotahttp://www.hukumonline.com/berita/baca/lt4d3f51115ce0a/toyota-ajukan-kasasi-perkara-merek-lexus- Attachment 1

Table 5. Listed Toyota’s Lexus Trademark in Various Classes in Online Database of The Directorate General of Intellectual Property Rights Website
NO
Title
Request Number
Date of Submission
Acceptance Date
Application Number
Date of Registration
Expiry Date
Class:
Goods Type:

Judul Permohonan
(Nomor Permohonan)
(Tanggal Pengajuan)
(Tanggal penerimaan)
(Nomor Pendaftaran)
(Tanggal Pendaftaran)
(Tanggal Jatuh Tempo)
Kelas
Jenis Barang
1
LEXUS AND DEVICE
J002007012404
23/04/2007
23/04/2007
IDM000182007
20/10/2008
23/04/2017
36
Jasa pembiayaan dan sewa-guna kendaraan bermotor, peralatan industri, pesawat udara dan kapal; pertanggungan dan pengurusan perjanjian asuransi, program penjaminan, perjanjian pemeliharaan pra-bayar (prepaid), dan perjanjian pembatalan hutang, semuanya terkait dengan kendaraan bermotor, peralatan industri, pesawat udara dan kapal; pembiayaan inventaris dan pengeluaran besar lain yang terkait dengan hak penjualan dan pembelian, konstruksi, dan pembiayaan kembali properti hak penjualan kendaraan bermotor; jasa perbankan termasuk kartu kredit, kredit tanpa jaminan, produk-produk penyimpanan (deposito), l
2
LEXUS RX 350
D002006030588
15/09/2006
15/09/2006
IDM000162201
23/05/2008
15/09/2016
12
Mobil-mobil dan bagian-bagiannya.
3
LEXUS
J002007036025
02/11/2007
02/11/2007
IDM000204489
18/05/2009
02/11/2017
37
Segala jasa perbaikan dan perawatan kendaraan bermoto
4
LEXUS
J002007036026
02/11/2007
02/11/2007
IDM000204490
18/05/2009
02/11/2017
39
Jasa penyewaan kendaraan bermotor.
5
LEXUS RX 450 H
D002007032171
24/09/2007
24/09/2007
IDM000205460
29/05/2009
24/09/2017
12
Mobil-mobil dan bagian-bagian struktur mobil.
6
LEXUS + LOGO
D002008036287
10/10/2008
10/10/2008
IDM000257841
13/07/2010
10/10/2018
6
Gantungan kunci, cincin untuk kunci, bandul/ hiasan pada gantungan kunci, timah; kaleng timah
7
LEXUS AND DEVICE
D2008036291
10/10/2008
10/10/2008
IDM000270760
21/09/2010
10/10/2018
18
Dompet saku, pakaian kuda, tas, koper, tas kantor, dompet.
8
LEXUS SC430
R002011010766
21/11/2011
21/11/2011
IDM000342709
20/12/2011
21/11/2021
12
Mobil dan bagian-bagiannya.
9
LEXUS GS300
R002011010756
21/11/2011
21/11/2011
IDM000342714
20/12/2011
21/11/2021
12
Mobil dan bagian-bagiannya.
10
LEXUS IS300
R002011010759
21/11/2011
21/11/2011
IDM000342712
20/12/2011
21/11/2021
12
Mobil dan bagian-bagiannya.
11
LEXUS ES300
R002011010763
21/11/2011
21/11/2011
IDM000342710
20/12/2011
21/11/2021
12
Mobil dan bagian-bagiannya.
12
LEXUS GS430
R002011010768
21/11/2011
21/11/2011
IDM000342694
20/12/2011
21/11/2021
12
Mobil dan bagian-bagiannya.
13
LEXUS RX300
R002011010757
21/11/2011
21/11/2011
IDM000342713
20/12/2011
21/11/2021
12
Mobil dan bagian-bagiannya.
14
LEXUS RX270
D002011015476
20/04/2011
20/04/2011
IDM000378794
14/12/2012
20/04/2021 Mobil-mobil, pelat pelindung mobil, penutup lantai mobil, pelindungjok mobil.
15
LEXUS
D002008036292
10/10/2008
10/10/2008
IDM000378288
07/12/2012
10/10/2018
25
Syal
16
LEXUS
R002012003417
25/05/2012
25/05/2012
IDM000361132
13/07/2012
25/05/2022
12
Mobil-mobil, suku cadang dan perlengkapannya.
17
LEXUS
D002008036290
10/10/2008
10/10/2008
IDM000368748
13/09/2012
10/10/2018
16
Tempat kartu, wadah dokumen, bloknot memo, buku catatan, pensil, pena bolpen, pulpen, pisau kertas, peta, buku

Table 6. Lexus Trademark that is registered under DJHKI