A Review of GRAMOXONE v PRIMAXONE Case
Through its recent decision in GRAMOXONE v PRIMAXONE (Case No. 71/Merek/2009/PN.Niaga.Jkt.Pst), the Commercial Court of the District Court of Central Jakarta has once again given due recognition to the protection of well-known trademarks belonging to foreign entity in Indonesia. The Commercial Court finds the use of similar marks and product label by a local company as an infringing action against IP rights of the rightful foreign entity. This decision has shone a brighter light to the protection of famous marks in Indonesia and hopefully to the enforcement of IP rights in general.
The case in question concerned Syngenta group, i.e. Syngenta Limited of United Kingdom and it’s local representative, PT Syngenta Indonesia (the Plaintiffs); taking PT Centa Brasindo Abadi and Mr Teddy Tio (the Defendants) to court for trademark infringement of their famous brand for pesticides, GRAMOXONE.
The plaintiffs have registered their trademarks GRAMOXONE, GRAMOXONE (Logo), GRAMOXONE (Label) and CP Frame in Indonesia as early as in 1996 and has been using and promoting the brand in Indonesia at least since 1970. The plaintiffs’ mark has developed a reputation as a leading brand for this range of products due to the plaintiffs’ substantial marketing and investment efforts.
It came to the plaintiffs’ attention that since 2006, PT Centa Brasindo Abadi, a locally based company, has been marketing and distributing pesticide products bearing the mark PRIMAXONE, which apart from phonetically and visually similar with the plaintiffs’ registered marks, were also bearing a similar label with that of the plaintiffs.
Further investigation revealed that the defendants have several times attempted to obtain registration for their trademark, PRIMAXONE. In 2004, trademark application for PRIMAXONE was filed in the name of PT Centa Brasindo Abadi, followed by another application filed in the name of Teddy Tio in 2007. However, both applications were refused by the Indonesia Trademarks Registry.
Despite the Registry’s refusals to their trademark applications, the defendants have continued using the similar mark and label on their products in the market, which finally lead the plaintiffs to take serious action against the said conduct.
The Commercial Court
The plaintiffs lodged a claim for trademark infringement at the Commercial Court of the District Court of Central Jakarta on 20 October 2009 under Case No. 71/Merek/2009/PN.Niaga.Jkt.Pst. The said claim was based on the grounds that the plaintiffs were the registered and rightful proprietor of all the trademarks GRAMOXONE, GRAMOXONE (Logo), GRAMOXONE (Label) and CP Frame in Indonesia.
They have been extensively using the marks for a considerable period of time and had spent a significant amount of money in its effort to promote the brand. As a consequence, the mark had become well known in Indonesia, had acquired goodwill and reputation and was thus entitled to protection as well-known trademark under Indonesian laws as well as in accordance with Article 6bis of the Paris Convention and Article 6 Paragraph 2 of the TRIPs Agreement.
The defendants did not appear for any of the scheduled Hearings, despite official summons and announcements made by the Commercial Court. Accordingly, the tribunal of judges had decided to continue the proceedings and examine the case in absence of the defendants.
Based on the public’s knowledge and recognition of the plaintiffs’ GRAMOXONE pesticide products, particularly within the Indonesian agricultural community, large-scale promotions, investments and trademark registrations in various countries worldwide, the Commercial Court has declared plaintiffs’ marks, GRAMOXONE, GRAMOXONE (Logo), GRAMOXONE (Label) and CP Frame, as well-known trademarks in Indonesia.
The Commercial Court adjudicated that the defendants’ mark was having essential similarity with the plaintiffs’ marks both visual and aural similarity. The Commercial Court has further adjudicated that the defendants’ conduct of marketing, trading and distributing pesticide products bearing the mark PRIMAXONE with similar label with those of the plaintiffs as an infringing act against the plaintiffs’ well-known trademarks and had ordered the defendants to immediately cease all activities for registering, promoting, distributing and/or marketing as well as to retrieve from the Indonesian market pesticide products bearing the mark PRIMAXONE.
This judgment, which has been considered as final and binding by the Court, has brought a breath of fresh air to the protection of IP rights in Indonesia and hopefully will lead to a brighter future for IP protection in the said country.