Recently, Detik.com released an online article discussing the apparent tendency for foreign, internationally renowned brands to lose trademark disputes in Indonesia against local, Indonesian brands. The article cited Delfi’s recent failed attempts at trademark registration for “CHACHA” due to similarities with the local brand “Cha-Cha” which has already been registered and owned by an Indonesian locale. Delfi tried several appeals, even to the Indonesian Supreme Court, but to no avail.
This case is one example of instances where international Goliaths crumble against local Davids. Swedish furniture franchise IKEA lost the trademark rights for objects in classes 20 and 21 after a lawsuit by a Surabaya-based company. Puma, one of the world’s most famous and successful brands of sportswear, lost to Indonesian-owned Pumada”. While Sidoarjo shoe company “Prolexus” managed to win their dispute with Toyota, who accused their name of being too similar with “Lexus”.
The defeats suffered by these international brands beg an interesting question: Do foreign brands tend to lose trademark disputes in Indonesia against Indonesian brands? Does the Indonesian IP ecosystem heavily favor local trademarks in disputes against foreign companies?
While the aforementioned cases were valid and interesting cases to be studied, it’s not enough to conclude that international brands are at an inherent disadvantage against Indonesian brands in trademark disputes.
For one case that favors Indonesian brands, one could easily find another that favors the non-Indonesian entity. For example, DC Comics sued PT. Marxing Fam for producing “Superman” themed wafers, which they deem as an infringement over their flagship character of the same name. Though it took a while, DC eventually won, and PT. Marxing Fam had their trademarks canceled. Furthermore, German international pharmaceutical company Merck KGaA won their dispute against Semarang-based PT. Phapros over the use of the trademarked term “Bioneuron”. Like Delfi, Phapros also had their appeal rejected by the Indonesian Supreme Court.
How one draws conclusions regarding biases in the Indonesian ecosystem could be heavily affected by recency bias or cherry-picking. It’s important to note that Indonesian trademark law (Law No 20, Year 2016) explicitly recognizes and protects the rights of “famous” trademarks. Article 21 stipulates that a trademark application is refused if the Mark is substantively similar to or identical with:
- a well-known Mark of other parties for similar goods and/or services
- a well-known Mark of other parties for different goods and/or services complying with certain requirements
Furthermore, the law also gives rights to owners of famous Marks to file a lawsuit (based on court decision) against other parties who unlawfully use the Mark that is similar to or identical to similar kinds of goods and/or services in the form of regardless of the mark’s registration status—as stipulated in Article 83 of Trademark Law.
Thus, it could be reasonably concluded that there is no inherent reason that international companies tend to lose trademark disputes in Indonesia against local brands, and the claim that they “tend to lose” itself is also contestable. What happens in cases such as Delfi’s, IKEA, or others are their own unique cases, which cannot be used as a generalization. For Delfi, the term “Cha-Cha” is deemed to be common in Indonesia, for it’s also the name of a traditional dance. Meanwhile, for Lexus and Puma, respectively, their lawsuits were against brands (Prolexus and Pumada) that were deemed different enough to avoid confusion. As mentioned before, while Indonesian Trademark Law has stipulations to protect well-known brands, it’s important to note the stipulations regarding substantial similarity and similar kinds of goods and/or services.
Conclusion
While the cases of international brands losing trademark disputes in Indonesia against local brands are worthy of study, it is not enough to delve into generalizations. Indonesia has clear regulations in regards to this and there are plenty of examples of cases in which either won by local brands or international companies.
Foreign or local, international or small, we should always strive to do our best to protect our precious trademarks while still respecting the rights of others.
If you have questions regarding trademarks or other forms of IP, contact us via ambadar@ambadar.co.id. As one of the most experienced IP consultants and experts in Indonesia, we will provide the best service according to your needs.
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