Multi Access Limited (“Multi Access”) recently succeeded in their claim to cancel the trademark registrations of a local entrepreneur, Dhalim Soekodanu (“Dhalim”), on the ground of bad faith, pursuant to Trademark Law No. 15 of 2001, Article 4.
Multi Access is the owner of numerous trademark registrations for “王老吉” which is pronounced as WONG LO KAT inCantonese and WANG LAO JI in Mandarin. It is popularly used for herbal tea products. “Wang” or “Wong” is a Chinese surname which means “King,” “Old” and “Lucky.” The said mark is registered in Argentina, Australia, Benelux, Botswana, Brazil, Brunei, Canada, Cambodia, Chile, Costa Rica, Croatia, Cuba, Egypt, EU, Germany, Hongkong, Iceland, India, Indonesia, Iran, Iraq, Israel, Italy, Japan, Jordan, Kenya, Kuwait, Laos, Lebanon, Macau, Malaysia, Mexico, Monaco, Morocco, Myanmar, Namibia, New Zealand, Nigeria, Norway, Oman, Pakistan, Panama, Peru, Philippines, Portugal, Korea, Russia, Saudi Arabia, Singapore, South Africa, Spain, Sri Lanka, Sudan, Switzerland, Swiss, Taiwan, Thailand, Turkey, United Arab Emirates, Uganda, America, Britain, Venezuela, Vietnam and Yemen. In Indonesia, it was registered in class 32 as early as 1991.
Dhalim Soekodanu, a local Indonesian entreprenuer, also registered the mark Wang Lao Ji in a different style
in classes 5 and 32 in 2002.
In the course of the proceedings, Multi Access argued that the subject registration is similar in appearance, spelling and/or the sound. Further, Multi Access established the well-known status of the Wong Lao Ji trademark by demonstrating the extensive trademark registrations and marketing campaigns conducted in the promotion of the Wong Lao Ji products in many countries, including Indonesia. Evidence submitted by Multi Access included copies of certificates of foreign registrations/applications, advertisement, rewards and favourable trademark cancellation decisions in favour of Multi Access.
In ruling in favor of Multi Access, the Judges of the Central Jakarta Commercial Court declared Wong Lao Ji to be a well-known mark and found Dhalim to have acted in bad faith in hijacking the said mark.
The foregoing decision underscores the policy under Article 6 of the Trademark Law which states that an application shall be rejected if the mark is similar in its essential part or entirety with a well-known mark owned by another party for the same kind of goods or services. Thus, a trademark registration obtained in bad faith will rarely be upheld by the Courts.