Donald J. Trump, the American business tycoon and television personality, has won a trademark lawsuit in Indonesia based on his own fame, successfully cancelling a registration for the mark TRUMPS owned by a local Indonesian businessman.
The decision is the first resulting from a series of lawsuits filed by Mr. Trump against Robin Wibowo, who owns Indonesian trademark registrations for TRUMPS in Classes 25, 35 and 43, each of which Mr. Trump has sued to cancel.
Announced on February 25, 2014, the Court’s decision only dealt with the cancellation action against Mr. Wibowo’s Class 25 registration for ‘ties and gloves.’ Ruling in favor of the plaintiff Mr. Trump, the Court declared him to be a “famous person” within the meaning of the Indonesian Trademark Act and cancelled the prior registration for TRUMPS because it was found to be ‘too similar’ to Mr. Trump’s name.
Mr. Trump based his lawsuit in large part on his fame and status as a rich businessman with a highly recognizable last name. Furthermore, Mr. Trump pointed not only to his numerous Indonesian registrations for the mark TRUMP in Classes 20, 36, 37, 43, and 44, but also to such registrations in various countries around the world. As such, Mr. Trump argued that his status as a famous person should afford him protection over his name in Indonesia.
In his defense, Mr. Wibowo argued that his mark TRUMPS was different than the plaintiff’s name—Donald J. Trump. He further argued that Mr. Trump did not have a monopoly over the word “trump” because it is a common word that has its own independent meaning in the dictionary, as opposed to being an invented word. In support of his arguments, Mr. Wibowo noted that there are numerous registrations for trademarks in Indonesia that include the word “trump”, such as TRUMPH, TRUMPF, and POLO TRUMP.
The Directorate General of Intellectual Property (DJHKI) was also named as a defendant in the lawsuit and defended itself by arguing that the application for TRUMPS had met all the formal and substantive requirements to be properly registered as a trademark in accordance with Indonesian trademark law. Furthermore, the DJHKI argued that Mr. Trump’s position was ‘excessive’ because he could not claim to own a monopoly over the word “trump.”
In its decision, the Jakarta Commercial Court agreed with Mr. Trump on all counts. The Court based its decision primarily on Article 6(3)(a) of the Indonesian Trademark Act, which states that a trademark should be refused registration by the DJHKI if “it constitutes or resembles [ ] the name of a famous person…except with [the] written consent of the entitled party.”
Because of his status as one of the richest men in the United States of America, the Court first found that Mr. Trump was a “famous person” within the meaning of the Act who had not provided any such written consent. The Court then found the mark TRUMPS to be sufficiently similar to TRUMP so as to warrant cancellation.
The TRUMPS case is interesting for a number of reasons. First, Mr. Trump was able to secure cancellation of a similar mark even though he did not have a prior registration in that class or for similar goods. Instead, the Court found that his fame was enough to justify cancelling the TRUMPS registration covering dissimilar goods. Indonesia is a first-to-file jurisdiction and many well-known brands have had difficulties when attempting to protect their marks for dissimilar goods (e.g., Christian Dior’s failure to cancel a registration for the mark BABY DIOR covering bicycles). It would appear that at least based upon this decision, a famous person is entitled to more protection in Indonesia than a famous brand.
Second, in line with the above, it can certainly be asked if this is the correct decision. Clearly, the mark TRUMPS is substantially similar to Mr. Trump’s last name. But is that all that’s required in Indonesia to cancel a mark based on fame? Mr. Wibowo’s argument that his mark TRUMPS is dissimilar to and easily distinguished from the plaintiff’s full name—Donald Trump—seems to have at least some merit. But the Court found otherwise, offering little analysis on this point. Following this decision, are Indonesian trademark registrations for CRUISE now vulnerable to cancellation actions brought by Tom Cruise?
Third, Mr. Trump’s lawsuits against Mr. Wibowo’s other two registrations for TRUMPS in Classes 35 and 43 remain pending before a different panel of judges in the Jakarta Commercial Court. Usually, where the parties and marks are the same, the plaintiff will choose to file just one action, seeking cancellation of all the defendant’s allegedly offending registrations. It is not clear why Mr. Trump decided to file separate suits instead of one. Likewise, it is unclear what impact, if any, this decision will have on Mr. Trump’s other pending actions against the remaining registrations for TRUMPS in Indonesia.
A contradictory decision would certainly make things interesting going forward for Mr. Trump, famous person or not.