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:
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 firstname.lastname@example.org. We’ll be sure to get in touch with you.