The Indonesia Supreme Court recently upheld a Commercial Court Decision, leading to questions about the rights of trademark holders when their registered trademarks are challenged in cancellation actions brought based on bad faith.

In 2013, Dewi Nilasari (“Nilasari”), an Indonesian entrepreneur, filed a trademark application for the mark “NOVEC 1230.” Nilasari stated the trademark referred to her research, and claimed “the mark was of her own creation, with each letter representing a word or phrase: N(new synthetic), O(organic), V(variable), E(engineered), and C(chemical production process)” and that the number 1230 was taken from “her favorite biblical verse, Mark 12:30.”

In 2016, 3M company (“3M”) attempted to register the trademark “NOVEC.”. The second “NOVEC” trademark application was rejected given Nilasari’s earlier registered trademark. In response to the Registry decision, 3M filed a cancellation action to the Commercial Court, based on the arguably well-known status of 3M’s trademark and the overall similarities of the respective marks. 

The Commercial Court decided in favor of 3M on the grounds of similarity and that Nilasari’s mark was registered “in bad faith.” Nilasari then appealed to the Indonesia Supreme Court, where she argued against the bad faith ruling and stated her trademark directly related to aspects of her research and there was no intention of imitation – that is, there was no bad faith.

The Indonesia Supreme Court upheld the earlier Decision finding Nilasari did not provide enough evidence to support her arguments to overturn the Commercial Court Decision.  Thus, the earlier successful cancellation action was upheld.

The “NOVEC” Decision was not the first case in which the owner of an arguably well-known trademark attempted to cancel a previously registered trademark.

Previously, in 1989, an Indonesian Court approved a cancellation action against a trademark arguably similar to the well-known “HUGO BOSS” trademark, cancelling the individual’s rights in favor of the owner of “HUGO BOSS.”

In another earlier case, a 1993 “SUPERMAN” mark registered by an individual remained on the registry even after DC COMICS, who created the Superman comic, filed a cancellation action.  Here, the cancellation action was rejected because the Court found the bad faith evidence submitted was insufficient. 

Considering the differing outcomes discussed, the Indonesian trademark community lacks clear guidance on whether the law favors owners of well-known trademarks or individuals filing for arguably similar trademarks to well-known trademarks. Also, it is unclear how much evidence of bad faith is necessary, and the type of bad faith evidence needed to succeed in bad faith cancellation actions.  Further, it is unclear as to how much weight the Indonesian Courts place on the time between the registration by individuals of arguably well-known trademarks and the filing of cancellation actions by the owners of the arguably well-known trademarks.  As there are more decisions addressing bad faith trademark filings in Indonesia, the Indonesian Courts may bring more clarity and direction to brand owners.

We will continue to monitor Indonesian bad faith cancellation actions and provide updates on the decisions and trends created by these cases.    

Sources:

https://www.inta.org/INTABulletin/Pages/Indonesia_7413.aspx

https://www.kk-advocates.com/wp-content/uploads/the-indonesian-supreme-court-reaffirms-the-first-to-file-system-and-the-existence-of-well-known-trademarks.pdf

http://www.mondaq.com/x/815464/Trademark/Indonesias+Trademark+Law+Proves+To+Be+Kryptonite+To+Superman