In a recent case before the Indonesian Supreme Court, the Indonesian Supreme Court in its decision at the highest stage, confirmed GS Yuasa Corporation’s ownership of the GS mark – being a well-known mark.
In October 2017, the Indonesian Supreme Court rejected the reconsideration petition filed by YT (previously as a defendant) against GS Yuasa Corporation "GS" (previously as a plaintiff) regarding battery products in Class 09. In doing so the Supreme Court upheld its cassation decision (or appeal to the Supreme Court) from an earlier trial that overturned the decision of the Central Jakarta Commercial Court. The Supreme Court’s verdict at cassation stage stated that the GS brand is a well-known mark for battery products and YT’s packaging has the same writing, placement, and colour combinations, which are very similar to the GS mark.
Prior to the above decision, YT had registered a series of GS Garuda Sakti marks, which he had owned for twenty years and used for selling batteries – the same industry as GS. Both YT and GS have various trademark registrations which feature the dominant element word “GS”.
In 2014, GS sued to cancel YT’s GS Garuda Sakti mark registrations at Central Jakarta Commercial Court on the basis of similarities to well-known marks of GS, “free riders” - taking advantage of the reputation of an earlier famous/well-known mark - and also bad faith. YT won and retained registration of his marks in this first instance dispute. GS subsequently filed cassation through the Supreme Court, and they won at this stage so YT lost their trademark registrations.
According to various articles, since the 1980s, GS has taken various legal steps to stop the battery products being sold by YT and other parties. They have filed Cancellation and/or Invalidity Actions on the basis of bad faith and identical and similar packaging and marks. GS holds trademark registrations in more than 90 countries, including Indonesia. The first registration of the mark GS has existed since 1958 protecting their products in Class 09 and since then their products have become famous in Indonesia.
In the court of the first instance, GS requested the court to cancel YT’s GS Garuda Sakti mark registrations under the registration number IDM000026703, IDM000174207, IDM000174208, IDM000174209, and IDM000174210.
GS’ arguments were that YT’s GS Garuda Sakti mark registrations are similar to GS’ well-known marks, as per the comparison below.
|YT’s marks||GS marks|
In addition, GS also requested the court to declare that YT’s GS Garuda Sakti registrations were in bad-faith, however, the court of first instance rejected GS’ entire arguments.
GS then filed an appeal to the Supreme Court (known as cassation) based, in general, on the following reasons:
a. That the court of the first instance failed to acknowledged that GS marks as described in the cancellation brief are well-known;
b. That the court of first instance failed to see similarities between GS marks and YT’s GS Garuda Sakti marks;
c. That the court of first instance failed to acknowledge decisions of various courts in favor of GS with respect to similar cases (i.e. cancellation of registered mark being similar or identical to its GS marks).Those cases being, among others:
(i). Supreme Court decision No. 019 K/Pdt.Sus/2007 in the case of the cancellation of GS GOLD SHINE mark registration in the name of Lucy Darmawati Waluyo;
(ii). Supreme Court decision No. 020 PK/Pdt.Sus/2007 in the case of the cancellation of the GS GOLD STAR mark of PT.Parahyangan Putra Pribumi;
The Supreme Court at the cassation stage accepted GS arguments based on the reasons that:
- YT’s GS Garuda Sakti marks were insufficient to be distinguished with GS marks. The Supreme Court at the cassation stage confirms that there are similarities between YT’s mark registrations and GS marks while these marks cover products related products in class 09;
- YT’s GS Garuda Sakti mark registrations are considered to have a likelihood of confusion with GS marks and can mislead GS consumers and therefore this can be deemed to be applications filed with bad-faith and with the intention of unfair competition;
- GS marks are well-known and have been used for a long time. GS also has presence in Indonesia with thousands of employees and that GS is also using and trading its products in Indonesia, thus it is profitable to Indonesia.
Based on the above, the Supreme Court at the cassation stage decided to confirm that GS is the first owner of the GS marks and is therefore entitled to use its marks and its variations in Indonesia. The Supreme Court also decided that YT’s GS Garuda Sakti mark registrations as above are deemed similar to GS marks and therefore should be cancelled. This decision was then strengthened by the Supreme Court at the reconsideration stage.
Two key takeaways from this decision are below.
If you encounter a mark registration which could harm the future use or registration of your mark in Indonesia (especially if you have been using or planning to use the mark) you would need to pursue the cancellation of the said conflicting registration vigorously (this can be seen from GS efforts to launch different cancellation cases against various parties trying to imitate its GS marks).
Further, should you lose a case at the court of first instance, higher courts would – in most cases – apply higher standards in deciding a case. It is not uncommon for the higher court to overturn lower court’s decision if the higher court sees that the decision of the lower court is in error.