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Indonesia Makes Headway in Cancellation Action Proceedings

For Civil law jurisdictions like Indonesia, where rights in a trademark arise from registration, not use, a trademark cannot be enforced unless it is registered. The owners of internationally famous Trademarks such as LOUIS VUITTON, YVES SAINT LAURENT and GUCCI often face serious problems with world-wide infringement of these marks. If the mark is registered in the country concerned, the owner can institute cancellation proceedings. However, if the mark is not registered in a country such as Indonesia, the owner of the well-known mark faces serious problems because of the traditional view that a trademark is territorially limited. Nevertheless, one would be remiss to suggest that Trademark Law in Indonesia allows registration of well-known marks for dissimilar goods and services.

Recent Cancellation action cases in the Jakarta Commercial Court have highlighted the tremendous progress Indonesia has made in terms of Intellectual Property protection. In May 2009, the Jakarta Commercial Court through their verdict, ordered the Directorate General of Intellectual Property Rights of Ministry of Law and Human Rights to cancel the registered mark “GUCHI” and remove it from the Trademark General Registrar. The lawsuit for cancellation action was filed by Gucci Guccio S.p.A, the owner of the world-renowned prestigious fashion brand, “GUCCI”.

The court recognized the mark, “GUCCI” as a well-known mark and decided that the owner filed the mark “GUCHI” in bad faith by using the popularity of the “GUCCI” mark. The court also pointed out that the mark, “GUCHI” had to be removed also on the basis of having similarity in its essential part with GUCCI.

Another case of commendable note is the INTEL (Intel Corporation) v INTEL JEANS case. Intel Corporation filed a suit against the registered INTEL JEANS owned by Hanitio Luwi because it considered INTEL JEANS to be using the reputation of its famous trademark, INTEL. The Commercial Court refused the lawsuit filed by the Intel Corporation based on the grounds that the well-known trademark, INTEL was well-known for different types of goods. However, the Supreme Court took a different standpoint. The Supreme Court was of the view that INTEL was a well-known mark and its scope of protection could be extended to other types of goods and consequently, the application of the INTEL JEANS was considered to be filed in bad faith.

It follows that the decisions of the aforementioned cases help affirm the position of well-known marks. In determining whether a trade mark is well-known, due regard must be given to the elucidation of Article 6 Paragraph 1 letter b of Law No. 15 Year 2001 which stipulates the criteria to be taken into account:

  • Registrations of the mark in several countries
  • Massive and intensive marketing on the products using the concerned mark
  • Investments of the mark owner in several countries in relations with the concerned mark
  • Public knowledge of the concerned mark, at least knowledge of certain group of people in the related business

However it should be duly noted that, since the said article has not been supported by further implementing regulation, strict application of this concept at the Trademark Office based on the Trademark Law is still ambiguous. It is more often than not, that Oppositions filed by Well-known mark proprietors at the Indonesian Trademark Office prove unsuccessful due to lack of technical regulation that equip them with sufficient practical guidelines to define whether a mark is well-known or not.

In this respect, the court decisions foreshadowed above, bring a fresh sense of optimism for well-known mark owners. It would appear that in spite of the lack of technical regulation in Indonesia, owners of well-known marks may now have chances that are above-average to win Cancellation action lawsuits at the Commercial Court and to have their mark awarded as well-known in the verdict. Such award may subsequently be found useful for future proceedings in the Trademark Office.

Essentially, a Cancellation action at the Commercial Court in respect of a well-known mark, may be based on the following relevant grounds:

1) Application/Registration is considered as creating public disorder. In the elucidation of the Trademark Law, a mark application that was made in bad faith is considered as an example of public disorder

2) The mark has similarity in its essential part or in its entirety with a mark owned by another party which has previously been registered for the same kind of goods and/or services

It is also worthy to note that the plane to excel in Cancellation actions proceedings is not only afforded to well-known marks. Trademark owners of non-famous marks may similarly institute cancellation proceedings if they can show that the mark has similarity in its essential part or in its entirety with a mark owned by another party which has previously been registered for the same kind of goods and/ or services.

In general, the following evidence may be regarded as useful to support a Cancellation action through the Commercial Court:

  • Particulars of the trade mark applications in Indonesia and Certificates of Registrations of the Plaintiff in various countries
  • Evidence of the Plaintiff’s investment, promotional and/ or marketing activities in many countries, including Indonesia
  • The Deed of Incorporation of the Plaintiff’s company (only if the Plaintiff’s mark is similar to his company name) and the Plaintiff’s company profile and/or Annual Report and/or sales figures
  • Evidence of public knowledge of the Plaintiff’s trademark
  • Any correspondence between the parties which would show bad faith from the Opponent
  • Official statements certifying the fame of the Plaintiff’s mark
  • Certificates of International Standard Organisation (ISO) or Awards that were received by the Plaintiff
  • Copies of several corresponding cases/legal proceedings with favourable verdict in other countries (if any)
  • Any other documents showing extensive use of the Plaintiff’s mark as a Trademark.

As a precautionary step, it is also advisable to consult and liaise with relevant expertise of the Plaintiff’s mark to be invited as expert witness(s) before the Commercial Court. Further, an investigation to gather information about the Opponents business activity and extent use of the mark in Indonesia should be undertaken prior to initiating Cancellation proceedings.

There is no doubt that Indonesia has come a long way from the Law No. 21 of 1961, whose basic feature was the adoption of the declarative system in which a Trademark was registered based on first-use. Today, Trademark owners may confidently look on the recent Commercial court decisions as beacons of hope for greater transparency in the judicial process and effective enforcement of their Trademark rights in Indonesia.