The Indonesian Commercial Court has raised the hopes of trade mark owners facing the grim and costly task of tackling trade mark infringers in Indonesia.
In Rudi Handojo vs Director-General of Intellectual Property Rights and Colin Edwards, the plaintiff sought to legitimise his counterfeiting operation by trying to register a trade mark belonging to the Australian company, GPI Automotive. Learning of this, GPI Automotive's managing director Colin Edwards, opposed the application, filed an application in his own name for the well-known Black Diamond trade mark and notified the Trademark Office of the pirate trade mark application. In response, the Trademark Office temporarily suspended Rudi Handojo's application. Edwards' application proceeded to registration, which meant that the Trademark Office could then reject Handojo's application based on a prior registration and bad faith.
Handojo brought proceedings in the Commercial Court claiming that the Trademark Office had wrongfully rejected his application because it was filed first. Edwards filed a counterclaim for trade mark infringement as Handojo had continued to sell products with the Black Diamond trade mark after the Trademark Office issued a certificate to Edwards for the Black Diamond mark. Edwards' evidence of Handojo's use of the Black Diamond mark demonstrated how Handojo had copied GPI Automotive's packaging, right down to the use of Australian contact details.
The Commercial Court upheld the Trademark Office's decision and ordered Handojo to pay Rp200 million (about $20,000) in damages for trade mark infringement. This is the second highest damages awarded by this Court to date.
The case is noteworthy because the Court allowed a counterclaim for trade mark infringement to be heard in the same proceedings as the cancellation action. Counterclaims are rarely accepted by Indonesian courts and defendants in Edwards' position are required to file separate proceedings, which significantly increases the cost and time involved.
When delivering judgement on behalf of the three-judge panel, the head judge, Panusunan Harahap, did not give any indication why the Court accepted Edwards' counterclaim. It is possible that the Court was swayed by Rudi Handojo's audacity in challenging the Trademark Office's decision to reject his application in the face of evidence of improper and illegal conduct on his part.
The case is now under appeal and is expected to be heard by the Supreme Court by the end of the year.
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| Brett McGuire |
Rouse
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