Arguing bad faith in trade mark cancellation cases can be a formidable challenge. The plaintiff is required to present a set of evidence demonstrating that the defendant's mark was registered in bad faith at the time of filing.
What the law says on bad faith trade marks
Based on Law No. 20 of 2016 on Trademarks and Geographical Indications, a bad faith applicant is one who files a mark with the intent to copy another party's mark for unfair business competition, misleading consumers, or gaining an undue advantage.
Typically, demonstrating that the defendant has an intention to copy the plaintiff's mark involves showing that they were aware of the plaintiff's mark when they filed the mark. This awareness can be challenging to establish for foreign mark owners who may not have used their mark in Indonesia or established sales or distribution channels within the country.
Clarification from recent Supreme Court cases
Nevertheless, several Supreme Court decisions have clarified that proving bad faith doesn't necessitate the official use or distribution of the mark in Indonesia. We look at two recent cases involving Supreme, an American clothing and skateboarding lifestyle brand, and Jollibee, a Filipino fast food chain.
In Supreme Court Decision No. 1313 K/Pdt.Sus-HKI/2021, the court determined that the defendant's knowledge of the plaintiff's “SUPREME” mark was established through the mark's accessibility on the plaintiff's website, launched in 2006 before the defendant's mark registration in 2010. The court emphasized that the internet makes information about marks readily available, irrespective of the defendant's location.
Similarly, in Supreme Court Decision No.1051 K/Pdt.Sus-HKI/2023, the Supreme Court considered that the plaintiff's “JOLLIBEE” mark is accessible through its official as well as other websites globally. This widespread exposure contributes to the mark's well-known status and suggests that the defendant was aware of its fame before registering their own “JOLLIBEE” mark.
In both cases, the plaintiffs' marks, “SUPREME” and “JOLLIBEE”, were not officially used nor distributed in Indonesia. Despite this absence of physical presence, the Supreme Court still deemed the plaintiffs' online presence, particularly their websites, as compelling evidence of the defendants' knowledge of the plaintiffs' marks.
What foreign brand owners need to know
These decisions serve as valuable precedents for foreign plaintiffs aiming to establish website evidence to prove the defendant's knowledge of the plaintiff's mark at the time of filing, which is a crucial element in demonstrating bad faith registration in a cancellation case.
The content of this article is intended to provide a general guide to the subject matter. Please reach out to us for advice about your specific circumstances.
