Automotive manufacturer BYD is currently involved in a dispute concerning the “Denza” trademark in Indonesia. The Chinese-based international company has used the mark Denza for their electric vehicle brands and is now looking to expand its market to Southeast Asia. However, they encountered a significant roadblock in Indonesia, as PT Worcas Nusantara Abadi (WNA), a company unrelated to BYD, has registered the “Denza” trademark in Indonesia under the number IDM001176306. The trademark is registered under Class 12 (vehicles and related products) since July 2023, while BYD’s Denza trademarks were registered in Indonesia in 2024.
In response to the registration of this trademark by PT WNA, BYD has filed a lawsuit against the company in the Central Jakarta District Court, registered under case number 1/Pdt.Sus-HKI/Merek/2025/PN Niaga Jkt.Pst on January 3, 2025.
In its petition, BYD requests that the Central Jakarta Commercial Court panel of judges grant all of its claims.
First, BYD requests that the court declare that BYD is the first registrant and the rightful owner of the trademark and its variants worldwide.
Second, BYD seeks to have the court declare that the trademark and its variants owned by the plaintiff are well-known marks.
Third, BYD requests the court to declare that the trademark No. IDM001176306 in Class 12, registered under the name of the defendant, is essentially or entirely identical to the well-known trademark and its variants owned by the plaintiff.
Fourth, BYD requests the court to declare that the registration of trademark No. IDM001176306 in Class 12 under the defendant’s name was submitted in bad faith.
Fifth, BYD seeks to have the court annul the registration of trademark No. IDM001176306 in Class 12 under the defendant’s name, with all legal consequences.
Sixth, BYD asks the court to order the third-party defendant to comply with and implement this ruling.
Seventh, BYD requests the court to order the Directorate General of Intellectual Property (DJKI) to cancel the registration of trademark No. IDM001176306 in Class 12 under the defendant’s name from the General Trademark Register, with all legal consequences.
Eighth, BYD requests the court to instruct the Clerk of the Central Jakarta Commercial Court to promptly deliver a certified copy of the final and binding ruling to the DJKI.
Ninth, BYD seeks to have the defendant pay all court costs.
Key Takeaways
While the case remains ongoing, the dispute between BYD and PT. WNA highlights several essential knowledge for trademark owners.
It’s important to keep in mind that Indonesian trademark law adheres to the First-to-File principle. First-to-File is means first person or entity to file an application for a trademark with the relevant authorities generally has priority over any subsequent applicants for the same or a similar trademark. In other words, trademark rights are typically granted to the first party that registers the mark, regardless of whether they were the first to use it in commerce. Therefore, it’s important for aspiring trademark owners to register their trademark early and immediately to ensure that they can freely utilize their trademark and avoid potential disputes.
Knowing that First-to-File is relevant in Indonesia and the PT. WNA has registered the Denza trademark in Indonesia before BYD, does that mean that they will maintain the legal right to that that mark despite the lawsuit launched by BYD? Not necessarily.
Law No. 20 of 2016 on Trademarks and Geographical Indications stipulates that a lawsuit against invalidation of registered Mark may be filed by relevant party based on the reasons as referred to in Article 20 and/or Article 21. This provides several options for that could strengthen BYD’s position.
Indonesian Trademark Law provide measures for owners for famous marks to protect its trademark against registry by other that are registered by other parties. According to Article 21, paragraph (1), letter (b) of the Indonesian Trademark Law, a trademark application can be rejected if it is found to be similar or identical to a well-known trademark owned by another party, especially for similar goods or services. The decision to reject such an application considers the public’s general awareness of the trademark.
The criteria for determining a well-known trademark are outlined in the Minister of Law and Human Rights Regulation No. 67 of 2016 concerning Trademark Registration (“Permenkumham 67/2016”). Article 18 of Permenkumham 67/2016 states the following:
- The criteria for determining a well-known trademark, as referred to in Article 16, paragraph (2) letter (b) and letter (c), are based on the public’s general awareness of the trademark within the relevant industry.
- The public, as referred to in paragraph (1), includes consumers or the public who are involved in the production, promotion, distribution, and sale of goods and/or services protected by the well-known trademark.
- In determining whether a trademark qualifies as well-known, the following factors are considered:
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- The level of public knowledge or recognition of the trademark within the relevant industry as a well-known trademark;
- The volume of sales of goods and/or services and the profits derived from the use of the trademark by its owner;
- The market share held by the trademark in relation to the circulation of goods and/or services in the community;
- The geographic reach of the trademark;
- The length of time the trademark has been in use;
- The intensity of trademark promotion, including the value of investment used for such promotion;
- The trademark’s registration or application for registration in other countries;
- The success of legal enforcement in the trademark field, particularly regarding the recognition of the trademark as a well-known trademark by the relevant authorities;
- The inherent value of the trademark, derived from its reputation and the guarantee of quality of the goods and/or services protected by the trademark.
Additionally, well-known trademarks are protected by various international agreements, such as the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement.
Furthermore, apart from the stipulations on famous marks, a common argument used in cases like this concern bad faith, which is also stipulated in Article 21. BYD could potentially argue that PT WNA’s actions were aimed at exploiting the reputation of the “Denza” brand without actual use or legitimate business interests, or to mislead the public about the company’s associations with BYD, then the registration could be invalidated on the grounds of bad faith.
Conclusion
This case provides important lessons for any trademark owners to know. It is essential to be steadfast and quick when it comes to registering your trademark, as to avoid potential disputes and issues in the future. Furthermore, we must also be mindful of well-known and famous marks while building a mark for your brand, as trademark law provides provisions that protect famous marks from bad faith registrations by similar marks.
For more information on trademark in Indonesia or if you need high-quality IP consultation, contact us at ambadar@ambadar.co.id. Our team of highly experienced experts are ready to assist you.
Sources:
https://oto.detik.com/berita/d-7803471/kata-byd-soal-sengketa-merek-denza-di-indonesia
