Before registering your trademark in another country, you should conduct a trademark search to prevent similarities with other parties’ trademarks. So, when the trademark has been used in the trading process, there is no intellectual property rights of other parties are violated, and you can also use your trademark exclusively. However, what if there is a case where a trademark that you want to register has similarities with another trademark that is the original trademark of the country where your trademark will be registered? Which brand will be prioritized for legal protection? In this article, we will present the answers to these legal questions.
IP Violations in Indonesia
In a report released by the United States Trade Representative (USTR) on April 26, 2023, Indonesia was declared one of the countries still included in the Priority Watch List. Priority Watch List is a list of countries that, according to USTR’s assessment, have a relatively severe level of IP violations. However, many businessmen with internationally renowned brands still want to market their products in Indonesia because Indonesia has a large population and is very open to foreign products. This is a significant advantage for product marketers because they will get many consumers from Indonesia.
The vast profits that product marketers will obtain are proportional to the risk of legal violations of intellectual property rights that they will face. Even so, currently, in Indonesia, efforts have been made to reduce the level of legal violations, including the development of appropriate legal regulations and the presence of legal services ready to provide legal services to protect intellectual property rights.
Example of a Brand Dispute Case from a Famous Cigarette Company in China
On March 31, 2023, a Chinese company, Hongyunhonghe Tobacco (Group) Co. Ltd., sued an Indonesian tobacco company, PT Sumatra Tobacco Trading Company, for the “WIN” brand. This lawsuit was filed at the Central Jakarta District Court in Case Register Number 45/Pdt.SusHKI/Merek/2023/PN.Niaga.Jkt.Pst.
As the Plaintiff stated, Hongyunhonghe Tobacco (Group) Co. Ltd. is the owner and right holder of the WIN Trademark, which has been used in China since July 2005, and the trademark registration has been extended until 2026. The mark has also been registered in the European Union, South Korea, New Zealand, South Africa, Moldova, Ecuador, Serbia, and Kyrgyzstan.
Indonesia became the following country of registration for the WIN mark, so the Plaintiff registered the mark with the DGIP to protect the following types of goods: “Liquid solutions for use in electronic cigarettes; Flavorings, other than essential oils, for tobacco; cigarette filters; filters for cigarettes; lighters; lighters for smokers; cigarettes; electronic cigarettes; tobacco; hand-rolled tobacco,” which is included in class 34.
However, during the trademark search process, Defendant owns a similar trademark that has been registered to the DGIP, but the trademark has never been used for three years. If referring to the rule of law contained in the trademark law in Indonesia, a third party can request the removal of the trademark.
Defendant then responded to the lawsuit by stating that Plaintiff’s suit was premature and vague, and the case lacked parties because it did not include the DGIP as a Co-Defendant.
Based on the arguments of both parties, the Judge then issued the following decision:
- Granting the Plaintiff’s claim in its entirety.
- Stating that Defendant has not used the registered WIN mark No. IDM000030697 for 3 (three) consecutive years in the trade of goods since the date of registration or last use.
- To declare null and/or void the registration of the registered WIN mark No. IDM000030697 on behalf of the Defendant from the General Register of Trademarks.
- Ordering the Registrar or an authorized officer thereof to submit a copy of the decision of this case to the Directorate of Trademarks and Geographical Indications, Directorate General of Intellectual Property (IP), Ministry of Law and Human Rights of the Republic of Indonesia to record the deletion of the registration of the registered WIN trademark No. IDM000030697 on behalf of the Defendant from the General Register of Trademarks and announce it in the Official Gazette of Trademarks.
- Punish the Defendant to pay court costs.
The Judge declared the Plaintiff, Hongyunhonghe Tobacco (Group) Co. Ltd., as the trial winner.
Legal Perspective on the Case
Article 74, paragraph (1) of Law No. 20 Year 2016 on Trademarks and Geographical Indications, states: “Abolition of registered Trademark may also be filed by a third party in the form of a lawsuit to the Commercial Court because the Trademark is not used for 3 (three) consecutive years in the trade of goods and/or services since the date of registration or the last use.
The use of trademarks after trademark registration is essential to use to be given legal protection. That way, the trademark owner can avoid cancellation, maintain its exclusive rights, and develop its trademark value to become a well-known trademark.
The procedure for applying for an International trademark in Indonesia
Quoting from the DJKI website, it is explained that in registering a trademark, several steps can be taken, including:
- International applications are submitted to the International Bureau through the Directorate General of Intellectual Property Rights.
- International applications are submitted by filling out the MM2 form in English. After Filling Forms, Forms Can Be Uploaded when Filing Madrid Application
- Eligibility of subjects who can file:
- Applicants who have Indonesian citizenship;
- Applicant who has a domicile or legal domicile in the territory of the Unitary State of the Republic of Indonesia.
- Applicants who have actual industrial or commercial business activities in the territory of the Unitary State of the Republic of Indonesia.
- Requirements for objects that can be submitted: Filing an International Application can only be done if the Applicant has had an Application or Registration (nationally) at the DGIP.
Solutions to Accelerate Trademark Registration
You can register your trademark quickly and precisely by getting professional help with intellectual property legal services. Legal assistance can make it easier for you to take care of all legal needs, starting from preparing legal documents, fulfilling administrative requirements, and getting help from experienced advocates. Therefore, Am Badar & Am Badar, in this case, is one of the IP Law firms that can help you provide these legal services. We serve intellectual property legal protection at every stage, from investigation monitoring to litigation dispute resolution. contact us via ambadar@ambadar.co.id. We will provide you with the best solution for your intellectual property needs.
References:
45/Pdt.Sus-HKI/Merek/2023/PN Niaga Jkt.Pst