Dewi Nilasari (appellant), a local entrepreneur, failed to retain proprietary rights to the NOVEC 1230 mark after the Indonesian Supreme Court dismissed her appeal in Decision No. 160 K/Pdt.Sus-HKI/2019 on February 21, 2019.
The appellant registered her mark in 2013 in Classes 9 (IDM000487501), 35 (IDM000487594), and 38 (IDM000487620). In 2016, the application by 3M Company (respondent) to file the NOVEC mark in Classes 9, 35, and 38, in Indonesia, was rejected by the Registry due to similarity with the registered mark owned by the appellant.
On March 28, 2018, the respondent filed a cancellation action against the appellant’s marks on the grounds of similarity (Trademark Law Art. 21(1)(a) and Art, 18(3) of Ministry of Law and Human Rights Reg. No. 67 of 2016) and bad faith (Trademark Law Art. 21(3)).
In October 2018, the Commercial Court (Commercial Court Decision No. 12/Pdt.Sus-Merk/2018/PN.Niaga Jkt.Pst) ruled in favor of the respondent on the ground of similarity, in particular with the well-known NOVEC mark, and that the application was filed in bad faith as the appellant was found to have an intention to copy, imitate, and take advantage of the NOVEC marks belonging to the respondent.
On October 15, 2018, the appellant filed an appeal at the Supreme Court, arguing that the marks were filed in good faith, as she had conducted scientific research, developed product formulations, and provided proof of her work. The appellant also submitted that the mark was of her own creation, with each letter abbreviating a word or phrase: N (new synthetic), O (organic), V (variable), E (engineered), and C (chemical production process). The appellant also submitted that the numbers “1230” were derived from her favorite biblical verse, Mark 12:30. Accordingly, she argued that there was no bad faith.
The appellant’s appeal was dismissed by the Supreme Court. The Supreme Court considered that the appellant’s evidence was insufficient to show good faith and therefore, the judges upheld the Commercial Court Decision.
This case shows that the rights holder of a trademark that is not yet registered or used in Indonesia could still cancel a registered trademark. The key is to be able to show evidence of similarity to a well-known mark or bad faith in filing the trademark.
By: Denise Mirandah
This article first appeared in the INTA Bulletin Vol 74, No. 13. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx