A cancellation against registered trademarks can be requested by international trademark owners even though the trademark has been legally registered at the DGIP. Some of the reasons for such requests may include prior registration, usage in the country of origin, or the establishment of the trademark as well-known. Thus, when an international trademark owner intends to register their trademark in Indonesia, a comprehensive trademark search and an appropriate legal strategy are essential so that the international trademark will smoothly matured into registration in Indonesia. For more details, please refer to the explanation in the following article.
Trademark Dispute of International vs National Glue Companies
Tong Shen Enterprise Co., Ltd. is a Taiwanese company that produces adhesive products (glue), and its trademark has been registered in various countries, including Indonesia. The company has made a license agreement with an Indonesian company named PT Putra Majuperkasa on May 23, 2017, and January 24, 2022, valid from May 23, 2022, until May 23, 2027. However, a trademark search found that another Indonesian company, PT Jaya Lemindo, had registered a logo that resembled the Taiwanese company. Thus, Tong Shen Enterprise Co. Ltd. filed a lawsuit to the Commercial Court at the Central Jakarta District Court to protect its brand from unfair business competition and brand dilution experienced by consumers.
Legal Basis of the Lawsuit
The legal basis for filing this lawsuit includes Article 20, Article 21, and Article 83 paragraph (1) letter b of Law No. 20 of 2016 concerning Trademarks and Geographical Indications. The articles read as follows:
Article 20
Trademarks cannot be registered if:
- contrary to the state ideology, laws and regulations, morality, religion, decency, or public order;
- is similar to, related to, or merely mentions the goods and/or services for which registration is sought
- contains elements that may mislead the public about the origin, quality, type, size, variety, purpose of use of the goods and/or services for which registration is sought or is the name of a protected plant variety for similar interests and/or services;
- contains information that is not by the quality, benefits, or efficacy of the goods and/or services produced;
- has no distinguishing power; and/or
- is a common name and/or symbol of public property.
Article 21:
- An application shall be refused if the Trademark is substantially or wholly similar to:
- A registered trademark owned by another party or applied for first by another party for similar goods and/or services;
- A well-known trademark owned by another party for similar goods and/or services;
- A well-known trademark owned by another party for non-similar goods and/or services that meet specific requirements or
- registered Geographical Indications.
- The application shall be refused if the Trademark
- constitutes or resembles the name or abbreviation of the name of a famous person, photograph, or the name of a legal entity owned by another person, except with the written consent of the rightful party; or
- imitates or resembles the name or abbreviation of the term, flag, emblem or symbol or emblem of a state or a national or international institution, except with the written consent of the authorized party; or
- imitates or resembles a sign or official seal or stamp used by the state or a Government institution, except with the written consent of the competent authority.
- An application shall only be accepted if it is submitted by an Applicant with good faith.
- Further provisions regarding the refusal of Trademark Application as referred to in paragraph (1) letter a through letter c shall be regulated by Ministerial Regulation.
The Plaintiff filed a lawsuit related to the “cancellation of trademarks” against the Trademark owned by Defendant I. In his Lawsuit, the Plaintiff requested a demand for a provision that is contrary to the provisions of Article 83 paragraph (1) (b) Trademark Law, which reads as follows:
- The owner of a registered trademark and/or the Licensee of a registered trademark may file a lawsuit against other parties who unlawfully use a trademark that has similarities in essence or its entirety for similar goods and/or services in the form of
- Lawsuit for compensation and/or.
- Temporary cessation of all actions related to the use of the Trademark.
Defendant’s Resistance
The Defendant, PT Jaya Lemindo, filed an appeal against the lawsuit, so the case is still developing and has not yet reached In kracht status. The Defendant filed the cassation because there were elements of lack of authority or exceeding the limits of charge, then misapplying or violating the applicable law and neglecting to fulfill the conditions required by the laws and regulations that threaten the negligence with the nullity of the decision concerned.
According to his attorney, the Defendant still has the right to produce, distribute, and trade his trademark. It is as mandated by Article 1 Paragraph 5 of Law Number 20 of 2016 concerning Trademarks and Geographical Indications until a Court Decision with permanent legal force (In Kracht Van Gewjisde).
Judge’s Decision
In this case, the Panel of Judges rejected the Plaintiff’s provision claim and Defendant I’s exception. However, on the case’s merits, the Court granted the Plaintiff’s entire claim. The Court also held that the Plaintiff’s trademark registration, Tong Shen Enterprise Co., Ltd., is valid and binding under the laws of the Republic of Indonesia. The Trademark Certificates and Renewal of Trademark Certificates belonging to the Plaintiff were also declared valid and binding under the law.
The Panel of Judges affirmed that the License Agreement between the Plaintiff and PT Putra Permata Majuperkasa is valid and binding under the law. In addition, the Trademark with Registration Number IDM000236218 owned by the Plaintiff was also recognized as valid and binding according to law.
The Panel of Judges stated that Defendant I is a bad faith trademark registration applicant. The registration of Defendant I’s trademark, which has similarities with Plaintiff’s trademark, was declared invalid and must be canceled. The Court ordered Defendant II to withdraw and remove Defendant I’s registered trademarks from the trademark registry and announce it in the Official Trademark Gazette. However, this decision still can change, considering this decision has yet to be inkracht van gewjisde.
Conclusion
In Indonesia, owners of international trademarks can apply the cancelation of national registered trademarks in DGIP, especially if those International trademarks have been registered, used in several countries, and classified as a well-known trademark.
As we have read in this article, the similar case has been filed in the trademark dispute case between Tong Shen Enterprise Co. Ltd. and PT Jaya Lemindo. The international trademark owners can file a trademark cancelation lawsuit by referring to the legal basis of Law in UU No. 20 of 2016 concerning Trademarks and Geographical Indications.
Thus, in this case, the judge’s decision states that the trademark with the plaintiff’s logo “G“, which resembles the defendant’s logo “G“, is declared legally and legally binding as belonging to the plaintiff. This means that his trademark registration cannot be canceled. Even though this decision has been issued, it is still possible to change it because it does not yet have inkracht van gewjisde status (permanent legal force).
In this case, we can conclude that trademark is a crucial element for a business. Both parties will feel losses if a party plagiarizes, imitates, or recognizes another party’s trademark in bad faith. It will lead to unfair business competition and confuse consumers regarding the origin and quality of the product. Therefore, to maintain the quality and reputation of your business products, it is necessary to have good legal protection of the trademark from when it is created until the trademark is used. If you have any legal questions regarding IP, please contact us via ambadar@ambadar.co.id
References:
Putusan Nomor 106/Pdt.Sus-HKI/Merek/2022/PN Jkt.Pst