Author : Ray Christian
Trainee Associate TSP Law Firm

GEOGRAPHICAL INDICATION v TRADEMARK

INTRODUCTION
The case takes place in 1978, when the first marketing of Toarco Toraja Coffee, its imitation product was also marketed in Japan. Key Coffee Co. together with Toshoku Ltd. has asked to register a trademark of Toraja (also written in Japanese letter) to the Agency of Patent Registration. The registration was announced on February 21, 1976 then fully completed on January 14, 1977.

The popularity of Toarco Toraja Coffee was increasing by time after the launch, if there was a company or shop selling a product using the same trademarks, then Key Coffee Co. informed that the right of the mentioned trademark belonged to the company and requested the illegal trademark user to stop it.

Mentioned by other coffee business parties that the monopoly use of such a name by Key Coffee Co. is wrong because Toraja is a geographical name of a region. They asked Key Coffee Co. to act in releasing its trademark right to all parties of coffee business in the world. Even though three coffee business associations have formally requested the Japanese authority, Key Coffee Co. won’t release the right due to the historical background of Toraja coffee development.

THE MAIN CASE

The case escalated to the Urawa District Court due to the misuse of the Toraja trademark. The company registered the trademark of AVANCETORAJA (also written in Japanese letter) in 1992. The company claims that “Toraja is a name of a geographical region and a noun”, therefore anyone can use the name legally. The conclusion on December 24, 1999 Key Coffee Co. (Indonesia) and Avance Trading Co. (Japan) agreed on three aspects as follows:
A. Avance Trading Co. admitted that “Toraja” is a trademark socialized by Key Coffee Co.

B.    Avance Trading Co. in using of “Toraja” trademark must be aware to high quality product in order to maintain its good image,

C.    Key Coffee Co. permitted Avance Trading Co. to use the trademark of “AVANCETORAJA”.

Based on its reputation, Toraja Coffee was introduced in an advertisement of Kimura Coffee Co. as follows “In Celebes, an island of the Dutch East Indies, there is a coffee that is produced in a very small quantity. Its aroma and taste are recognized as the best in the world, and it is also said that its quality is better than the famous Mandheling coffee from Sumatra. However, due to the very small quantity, the coffee is not exported and that is Toraja Coffee”. Cup taste characteristics: excellent harmonious taste blend of acidity and bitterness.

This overlapping case of Geographical Indication and Trademark on the subject is in accordance with Article 22 and Article 24 of the TRIPS Agreement, in respect of goods originating in a geographical area misused and misleading the public as the true place of origin by others. The essence of trademark as a protector of brand identity and GIs as a link between product and place of origin.

THE LEGALITY

First to file system makes Key Coffee Co. the rightful trademark owner of Toraja, with Urawa Court Decision, making it possible for other parties to use Toraja trademark with conditions as mentioned. Indonesia has just registered IGs “Kopi Arabika Toraja” on 14 September 2018 with number IG.00.2012.000007.

Pursuant to Article 33 Government Regulation No. 20/2019 Jo. Article 38 Minister of Law and Human Rights Regulation No. 12 of 2019, the Appeals Commission makes recommendations to the Minister for the removal of registered trademarks in the event that they are substantially and/or wholly similar to GIs. With the condition that 2 years after the GIs are registered and the trademark is registered for less than 5 years, unless the consent of the owner of the GIs is obtained.

The needs to perform various forms of protection related with geographical indication on International Level scale:

A.    Protection of International Treaty administered by World Intellectual Property Organization (“WIPO”) as a legal framework to protect Appellation of Origin and Geographical Indication, which is the Lisbon Agreement.

B.    International Cooperation and Collaboration between countries to combat cross-border infringements and effectively protect GIs.

C.    Enforcement and Monitoring actively on the market to identify and take action against misuse or imitation of protected GIs.

The needs to perform various forms of protection related with geographical indication on National Level scale;

A.    Includes all forms of protection that are not based on a decision by the competent authority establishing protection for a particular geographical indication, but result from the direct application of legal provisions or principles established by jurisprudence.

B.    Protection of geographical indications through registration of collective marks (including agricultural labels) or certification marks.

C.    Includes all special titles of protection of geographical indications resulting from a decision of the competent governmental authority establishing the protection.

If there is a possibility of an action for unfair competition based on the misleading use of a geographical indication, the outcome of such an action is uncertain. In particular, the extent to which the geographical indication in question must have acquired a reputation may vary from country to country.

CONCLUSION

The required geographical indication must have been used in commerce for a certain period of time and the association between the geographical indication and the place of origin of the goods and services must have been established in the relevant circles. Therefore, a geographical indication whose reputation has not yet been established on the market cannot be protected against misleading competitors by violating the law of unfair competition.

A.    Geographical indications that have not been used for a certain period of time may lose their reputation and therefore may no longer be protected by an action for unfair competition.

B.    Geographical Indications that become generic in a particular country lose their distinctive character and are no longer protectable in that country.