We often see unauthorised repeated filings of trade marks that are similar to other parties' well-known trade marks. Even though in most cases the proprietors of the well-known trade marks successfully cancel the conflicting trade mark at the Commercial Court and get a final and binding decision, it does not necessarily stop the conflicting party filing modified versions of the trade marks at the Trademark Office. However, things may be changing for the better, at least from the perspective of the Commercial Court.
In a recent trade mark cancellation case involving the owner of a well-known mark for shoe products against a local individual, the panel of judges at the Commercial Court in Jakarta took a different approach in deciding in favour of the trade mark owner. The panel of judges took into consideration earlier court decisions on previous cancellation cases between the same parties particularly to determine the well-known status of the trade mark.
The cancellation case was initiated by the owner of a well-known mark to cancel 14 conflicting trade mark registrations after two previous successful cancellation cases against the same party for similar modified trade marks. The fact that Indonesia adopts the first-to-file trade mark registration system and that the Trademark Office does not have a robust trade mark search mechanism in place has made it possible for trade mark squatters to repeatedly file similar modified trade marks regardless of final and binding court decisions to cancel their earlier trade marks that have been registered in bad faith.
In rendering its decision, the panel of judges considered strong evidence that the plaintiff presented, in particular trade mark registrations in various countries, evidence of use indicating use prior to the registration date of the conflicting trade marks and actual proof of public confusion over the source of the conflicting products. Most importantly, the panel of judges relied on the previous final and binding court decisions in determining the well-known status of the trade mark. The decision rendered by the panel of judges is quite exceptional since the panel of judges would normally disregard previous court decisions and heavily rely on the worldwide trade mark use and registration prior to the registration of the conflicting trade mark to determine the well-known status.
This decision not only brings significant clarification for trade mark owners that the well-known status of a trade mark prevents conflicting trade marks from maturing into registration in opposition actions at the Trademark Office, but also shows that the well-known status as declared by the Commercial Court will survive in the Indonesian legal system where earlier jurisprudence or court decisions are not legally binding.
The decision was rendered by the Commercial Court, which recently moved to new spacious and convenient premises at Kemayoran, Central Jakarta.
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Daru Lukiantono |
Raja Mada Silalahi |
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