Indonesian brands in Paris controversy: can we use "Paris Fashion Week" trademark?
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Paris Fashion Week (PFW) provides a great opportunity for business players in the fashion world. Along with the popularity of PFW, various creative ideas were demonstrated in the hope of expanding their market reach. One of them is creating independent shows during PFW. Of course, there is nothing wrong with trying to develop a business.
In the beginning of March, Indonesian brands claiming to be part of PFW sparked backlash after public figure and fashion designers called out the misleading attempt to associate their shows with PFW. Some brands and facilitator then clarified they are not part of PFW, but they staged fashion shows during PFW.
In Gekrafs’ case, the theme of the show is named “Gekrafs Paris Fashion Show at Paris Fashion Week”. Gekrafs told TFR they were allowed to used PFW name as long as they specified they were “off schedule”.
The question is, can a party who is not affiliated with Paris Fashion Week use the term Paris Fashion Week?
When we open the page fhcm.paris, we will find the symbol ® after the word Paris Fashion Week. The symbol is an abbreviation of the word "registered", which means that the brand has been officially registered with the authorised institution.
The Paris Fashion Week brand is registered with the United States Patent and Trademark Office as International Trademark Classes in Class 16 for Paper Products, 35 for Advertising and Business Management and 41 for Education and Entertainment Services.
Image: Paris Fashion Week trademark
What does it mean to have a registered mark?
Having a registered mark means that the trademark holder has the exclusive right and full control over their brand to use the brand and gives permission to other parties to use it. This right also prevents the brand from the possibility of other parties using a brand that resembles or identical with their brand for similar goods and services because it can create the likelihood of confusion among the public.
Can we use other people's registered marks?
The Trademarks and Geographical Indications Law No.20/2016 (MIG Law) prohibits every person to unlawfully use any mark which is identical or substantially similar to the registered mark of other parties for similarly produced, and/or traded goods and/or services (Article 100 paragraph (1) and paragraph (2)). Similar means to be in the same class. There are 45 classes recognised by the MIG Law. Violation of this law can result in criminal and civil sanctions.
The MIG Law was formed based on the TRIPS (Trade-Related Aspects of Intellectual Property Rights) agreement which regulates intellectual property rights (IPR) for WTO member countries. Therefore, IPR regulations that apply in Indonesia are likely to have similarities with IPR regulations of other WTO member countries.
The MIG Law even provides more protection for well-known brands by not allowing other parties to use similar/identical marks for goods and services in different classes under certain conditions.
Other symbols
In addition to the ® symbol, there are several other symbols that are often used related to intellectual property rights.
© : © is a symbol of “copyright”. This symbol is used to identify that a product or service has registered its copyright with the authorised institution. The coverages of copyright vary, including images, photos and paintings.
™: the symbol ™ stands for “trademark”. The ™ symbol is used for brands that have not been registered with the authorities, but wish to show the existence of the brand to the public. Just like a registered mark, the ™ symbol also covers name, image, symbol or other aspects, such as brand jingle.
Trademarks and forms of infringement
Trademark infringement is defined as an act where one party unlawfully uses a mark which is identical or essentially similar to a trademark owned by another party for similarly produced and/or traded goods and/or services.
The form of trademark infringement continues to grow today, but can be grouped into 3 groups, namely brand piracy, brand imitation and imitation of labels and packaging of a product.
Regardless of the type of infringement, the use of another party's registered trademark without permission has the potential to lead to a trademark lawsuit, as in the case of Hermès vs Mason Rotschild. Hermès sued the digital artist over alleged trademark infringement for the word Birkin on the trademark “MetaBirkin” (owned by Mason) which is part of the trademark owned by Hermès.
Image: MetaBirkin
Another example is the dispute between D2 Holdings and MRC 11 Distribution Company, the party behind the Netflix series “House of Cards”. D2 Holdings as the owner of the “House of Cards” mark has since 2009 has filed a lawsuit over the use of the mark.
Previously, MRC had filed a trademark application at the US Patent and Trademark Office, but their application was continuously rejected due to the existence of a similar trademark that had been registered earlier. D2 Holdings attorney William C. Saturley quoted in CionCaip explained that there was an allegation that MRC had sold the mark to other parties without permission. This was the ground of the lawsuit.
Indonesia has seen various cases of trademark infringement, ranging from the dispute over the word "strong" between the two largest toothpaste companies in Indonesia and the unauthorised use of the "Tugu Selamat Datang" mark by the manager of the Grand Indonesia mall to the dispute over the Geprek Bensu trademark.
Image: Geprek Bensu (left) and I Am Geprek Bensu (right). Geprek Bensu in collaboration with Yanti Adeni claimed to be part of Paris Fashion Week
The Geprek Bensu dispute occurred between Ruben Onsu as the owner of the Geprek Bensu mark against the I Am Geprek Bensu brand owned by the three friends Yangcent, Kurniawan and Stefani Livinus. The lawsuit began when Ruben sued PT Ayam Geprek Benny Sujono on the grounds that he was the first registrar and owner of the Geprek Bensu business. After a long process, the court rejected Ruben's appeal and ruled that PT Ayam Geprek owned by the three friends is the first registrar and legal owner of the I Am Geprek Bensu brand.
The examples above teach us not to use registered trademarks or services belonging to other parties for economic purposes because it could cause trademark disputes, especially if the mark is a well-known mark.
The prohibition to use registered marks includes the prohibition against using a name without including a logo, such as using the words Paris Fashion Week or PFW without a logo, a case that is going viral right now. This is because name and logo are both part of a brand - a unique marker belonging to a particular person or business entity. In principle, it is prohibited to do actions that can dilute other brands.
