Kedudukan Varian Produk Tidak Terdaftar dalam Penolakan Merek atas Dasar Iktikad Tidak Baik

Abstract

The first-to-file rule gives registration a central role in Indonesian trademark law, but filing priority cannot validate conduct aimed at capturing another party's market reputation. This article evaluates Central Jakarta Commercial Court Decision Number 21/Pdt.Sus-HKI/Merek/2024/PN Niaga Jkt.Pst, which upheld the refusal of the “Roti Bimbam & Logo” application even though the product-variant designation had not been registered. The study is doctrinal and examines the relevant legislation, the court's reasoning, and trademark concepts. It argues that an unregistered designation may still be considered when bad faith is assessed; however, the reputation attached to Tan Ek Tjoan cannot, without further proof, be extended to every name used for its products. A refusal should be supported by evidence that the disputed designation identifies a commercial source, that consumers attribute its goodwill to a specific undertaking, and that the applicant knew of and sought to exploit that association. The judgment protects the integrity of registration, yet it does not sufficiently distinguish the registered house mark from a trade name and a product designation. The article therefore formulates a sequential three-part assessment covering the function of the sign, attribution of reputation, and the applicant's market conduct.