As part of his social responsibility for society especially for those who experience unfair legal proceedings, in 2022 Donny A. Sheyoputra from the SHEYOPUTRA Law Office has been examined as an expert in a trademark infringement case at the West Jakarta District Court. Jefri Yunus, who was accused for infringing a registered trademark, was charged at the West Jakarta District Court for violating Article 100 Par (2) of the Law No. 20 of 2016 concerning Trademark and Geographical Indication. According to the Public Prosecutor, Jefri Yunus had infringed Luasan Ferdinand’s registered BODYGUARD trademark. The mark was registered under the Registration No. IDM 000656529 for goods in class 09 namely anti-scratch protectors for cellphones, cellphone batteries, cellphone chargers and cellphone casings.

As an expert in this criminal case, Donny Sheyoputra explained to the Panel of Judges that it was inappropriate for Jefri Yunus to be charged or accused for infringing Luasan Ferdinand’s BODYGUARD trademark. The BODYGUARD trademark has been canceled by the Central Jakarta Commercial Court based on a cancellation action filed by Jefri Yunus. The Commercial Court’s decision has now been final and binding since Luasan Ferdinand did not present during in all hearings and submit any cassation to the Supreme Court. His absence indicates that he might not consider his interests or rights for the BODYGUARD trademark to be important. As Luasan Ferdinand’s BODYGUARD trademark has now been removed from the Trademarks Registry, he has lost his exclusive rights to prevent other parties from using that trademark.

Donny Sheyoputra also explained that the BODYGUARD trademark actually belongs to Jefry Yunus and it is valid for 10 (ten) years until since 23 November 2021. The Trademark Office has granted a Registration No. IDM000988479 for this mark covering similar goods in class 09.

Unfortunately, the Panel of Judges at the West Jakarta District Court does not seem to have a sufficient understanding on the Trademarks Law, thus in their opinion Jefri Yunus is still guilty of infringing Luasan Ferdinand’s BODYGUARD trademark, despite it has been canceled by the Central Jakarta Commercial Court. The Panel of Judges at the West Jakarta District Court then sentenced Jefri Yunus for 10 (ten) months imprisonment plus a fine of IDR 500 million. If Jefri Yunus does not pay this criminal fine, this penalty will be replaced by a light imprisonment for 3 (three) months.

Due to the unfair decision and incorrect application of the trademark protection principles, Jefri Yunus file an appeal to the Jakarta High Court in December 2022. On 11 January 2023, the High Court granted Jefri Yunus’ appeal and canceled the decision of the West Jakarta District Court. Jefri Yunus was declared not legally and convincingly guilty for infringing Luasan Ferdinand’s BODYGUARD trademark as it has been cancelled.

The Public Prosecutor then filed a cassation to the Indonesian Supreme Court. However, on 16 October 2023 the Supreme Court upheld the decision of the High Court and rejected the cassation. Thus, Jefri Yunus was not proven guilty for infringing Luasan Ferdinand’s BODYGUARD trademark as accused by the Public Prosecutor.

“Personally, I am glad to know that the Supreme Court upholds the High Court’s decision in favor of Jefri Yunus. It is unreasonable that Jefri Yunus should be condemned or accused for infringing someone’s trademark which has been canceled by the Commercial Court. Furthermore, that trademark is actually owned by Jefry Yunus as it has been registered in the Trademarks Registry. There was an irresponsible broker who did not submit Jefri Yunus’s trademark application for the BODYGUARD mark on time. Consequently, Jefri Yunus’s opposing party successfully secured a trademark registration for the BODYGUARD mark earlier and then filed a complaint report against Jeffri Yunus at the Jakarta Metropolitan Police Station. Fortunately, the Central Jakarta Commercial Court granted Jefri Yunus’ cancellation action against this BODYGUARD trademark and remove it from the Trademarks Registry. This Commercial Decision is then used by the Trademarks Office to grant a registration number for Jefri Yunus’ application, ” said Donny Sheyoputra.

Donny further added, “As an advocate and Intellectual Property consultant, I am honored to provide my expertise and assist Jefri Yunus in the court. There are at least two lessons from this case. First, do not use or involve any services of broker or party who has no qualification as Intellectual Property consultant if you wish to secure any trademark registration. Second, we should carry out our noble profession by paying attention to some aspects of social responsibility for the public. Do not be too capitalistic in our mentality or too money oriented like many foreign legal practitioners who have local partners to disguise their jobs as Intellectual Property consultants in Indonesia. We have nothing to lose in helping people as expert witness in the court without too much considering financial benefits. If we can help people who are oppressed to produce good court decisions, in the future these decisions will be also benefitting our clients as references to solve their problems.”