The Commercial Court has raised the hopes of well-known brand owners facing the grim task of tackling trade mark pirates in Indonesia.
In Diageo North America vs Stephen Rudy, Diageo sought to cancel the defendant's registration in class 25 for the Smirnoff trade mark. Rudy obtained the trade mark registration in class 25 (clothing) in 2004, in spite of registrations for the trade mark held by Diageo in class 33 (alcoholic beverages), some of which date back to 1958.
The Trade Mark Law authorises the Trade Mark Office to reject an application for a mark that is similar to a well-known mark for similar goods or services. The Law contains guidelines for determining what constitutes a well-known mark. These guidelines, contained in the Elucidation to the Law, are similar to WIPO's Joint Recommendation on the Protection of Well-Known Marks.
The Trade Mark Law does not afford the same protection to well-known marks for dissimilar goods or services. Article 6(3) does provide that an application may be rejected if the applied mark is similar to a well-known mark for dissimilar goods or services. However, the Law requires that certain conditions, as further provided in a Government Regulation, must be met. This Government Regulation remains unimplemented.
Nevertheless, in such cases the Trade Mark Office and the Commercial Court will exercise their discretion to disallow registration. In some cases, the Commercial Court has directly applied Article 16(3) of TRIPs. However, the more common approach is to disallow registration on the grounds of bad faith. Actual evidence of bad faith is not necessary as the Trade Mark Law guidelines provide that bad faith can be deduced from the similarity to the well-known mark in question. In this case, the Court applied both grounds to cancel Rudy's class 25 registration.
An interesting feature of this case is that the Trade Mark Office, which was named as second defendant, submitted that the defendant's Smirnoff trade mark was not well-known and that the goods were not similar. This has caused some concern in the legal profession as to the Trade Mark Office's role in such proceedings and whether it should take a position either way. The Trade Mark Office's submissions may serve to discourage potential plaintiffs from naming the Trade Mark Office in cancellation proceedings. At present it is optional whether to name the Trade Mark Office as a party, though this is set to change when amendments to the Trade Mark Law are introduced later this year.
This case shows that cancellation the grounds of being a well-known mark (where goods are different) can succeed at the Indonesian commercial court despite the bad experiences of foreign plaintiffs in 2008 and 2009. Evidence preparation is key. Iit appears that the unsuccessful cases failed for lack of evidence meeting requirements such as providing certified extracts of foreign registrations and credible evidence of fame.
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