Mark versus Copyright: Avoiding an Overlapping Claim

Mark or sometimes called trademark is the current evolution of symbolic culture that dates back to the pre-historic of human race. A symbol in its own development may create either positive or negative images. A popular example is a picture of two crossed bones under a skull. In the past it was decorated on the walls of ships belonging to pirates, and now this symbol is always associated with harmful materials; from the beginning it means danger!

The efforts of companies which in many ways trying to make their marks popular, have the same final episode: to gain widespread acceptance of consumers. They want consumers to always sided with them. Once a mark is deeply attaching in the mind and soul of the customers, a mark is deemed to have a high economic value as intangible asset. For a wellknown mark, its economic value claimed to be millions of dollars. Based on this economic value a mark and copyright as well, are categorized as an object of intellectual property (so called intellectual property rights). With this same ground, a tradmark should be registered to obtain legal protection and acknowledgement.

A mark is no more than a personification of goods or services, useful to identify goods or services produced by different companies/producers. Thus, a mark is a sign or symbol indicating the producers of goods and services and at the same time exhibiting the quality of goods and services.

An intellectual property right closely related to mark (since in certain circumstances have a distinctive nature) is copyright. Copyright is defined as an exclusive right of the creator or copyright holder to publish or duplicate his/her/its creation or to give license to do so, (Article 1 point 1 of Law No. 19/2002 on Copyright), which automatically exits after a creation is materialized (Article 2 paragraph 1 of Law No. 19/2002). The protection of copyright is automatic in nature and exists when a creation is materialized in a tangible form. Copyright registration is not compulsory since its registration does not generate a copyright.

Copyright law extends protection to various creations in art, literature and science. The protected creations among others, books, computer program, pamphlet, songs or music, sound recording, painting, logo, photography, carving, calligraphy and many others. Mark, however, in certain ways overlap and crash with copyright, which sometimes causes difficulties. This may occur due to the facts that certain creations such as symbol, logo, photograph or painting can be registered as marks or copyrights.


Mark vs. Copyright

The ownership of marks especially for logo, painting or pictures or that sort of things (you name it), potentially create difficulties in the future when the owner failed to register a logo, painting or picture both as mark and copyright. It is possible that certain logo or painting is registered as mark by a particular person or company while the others registered the same as copyright.

Overlapping claims against a logo occurred in a mark case few years ago before the Central Jakarta Commercial Court, involving the foundation of a well-known university in West Jakarta against its own University’s head (locally known as Rektor). The foundation claimed the university’s logo had been registered by the foundation proved with a mark certificate issued by the Indonesian Directorate General of Intellectual Property Rights, while the Rektor claimed the University had obtained certificate of copyright registration also issued by the same Directorate General for the same logo.

A dualism in the ownership of logo as described in the above mentioned legal case, may potentially happen again and again since the registration mechanism for those rights are different in nature. In registration procedure of copyright, no substantive examination applied which allows the proposed copyrights to easily pass the registration process in obtaining the registration certificates. The simple process in registering a copyright is driven by the basic legal concept of Indonesian copyright law that a registration does not create a copyright. This is different with the mark where the lawful owner of a mark is the person who first registers the mark (first to file principle).

Besides, the marks eligible to be registred are those that fufill certain requirements. The mark applications may be rejected based on certain grounds, especially on the grounds of bad faith (Article 4 of Law No.15/2001 on Mark) and similarity in principle or in its entirety with the previously registered marks (Article 6 of Law No. 15/2001). The applicant is deemed to have a bad faith if the applicant is believed to be dishonest in seeking the registration, such as a hiden intention is to imitate or exploit a well-known marks. While the requirement of copyright registration is uncomplicated which paves the way to obtain copyrights effortlessly. This is a dilematic situation and not easy to address especialy when  there is a dualistic ownership.

In practice, however, the business community to some extent tends to focus on registering mark while ignoring the copyright aspect of the proposed mark. In the name of saving, the entrepreneurs are less enthusiastic about registering their copyright, whereas this cost only few hundred rupiahs. Certainly, this worthless savings may be exposed to unauthorized registration as a copyright for a registered mark, leading to unavoidable dualism in ownership.

The mark owners have every right to protect his/her registered marks and to anticipate the difficulties in times of overlapping claims, it is worth to recommend that any logo, painting or pictures intended to be used as marks should be registered both as mark and copyright. When a legal battle starts to flame, it is always difficult to put it out.