Again! Gudang Garam vs Gudang Baru Trademark Dispute Case

The trademark dispute is not the first time this has happened, but the lawsuit by cigarette giant PT Gudang Garam Tbk (GGRM) against cigarette company Gudang Baru regarding trademarks has made this issue busy again in the public. This dispute began when on March 22, 2021, GGRM sued Gudang Baru regarding trademarks. This lawsuit was filed by the company against the owner of Gudang Baru (Gajah Baru), Ali Khosin, regarding a special civil case of intellectual property rights. Given the many similarities in the brands of Gudang Baru and Gudang Garam products, this has the potential to cause confusion for consumers. Gudang Garam’s management stated that it found facts in the field that the brands on Gudang Baru’s products were misleading, making it appear as if Gudang Baru’s products were or could potentially be considered the Company’s products.

What are the demands of Gudang Garam?

Gudang Garam registered this lawsuit at the Surabaya District Court with case number 3/Pdt.Sus-HKI/Merek/2021/PN Niaga Sby. Referring to the Surabaya District Court Information Search system data, Gudang Garam in its petitum, among others, states:

First, grant the Plaintiff’s claim in its entirety.
Secondly, it stated that Gudang Garam and the plaintiff’s paintings were well-known marks.
Third, Gudang Garam’s and Gudang Baru’s marks together with their paintings are substantially or wholly similar to those of Gudang Garam.

Gudang Garam also considered that the Gudang Baru trademark as a defendant had been filed on the basis of bad faith and declared the registration of the trademark void. “Ordering the defendant to submit to and implement this decision and cross out the registration of the Gudang Baru trademark,” wrote Gudang Garam in its petitum. Not only that, the company also ordered the defendant to reject all applications for registration of brands based on the words Gudang Baru, Gudang Baru Origin, and Gedung Baru submitted by Defendant I, companies owned by Defendant I and its affiliates.

Gudang Garam ‘Wins War’ in Court

In the end, GGRM won the trademark dispute from Gudang Baru company based on the Supreme Court Decision. “Based on this decision, the relevant parties are ordered to immediately implement the contents of the verdict in the shortest possible time,” said the contents of the decision as announced in the mass media, July 4, 2022. With the issuance of this Supreme Court decision, Gudang Garam is the sole holder of the exclusive rights to the Gudang Garam brand in Indonesia. Therefore, Gudang Garam prohibits other parties from producing, using, distributing, and selling cigarette products or the like that have similarities in the main product or the whole. “For this reason, we remind the general public, producers, retail traders, retail stores, sellers, and / or dealers to immediately stop marketing production activities, sales, distribution, and use of cigarette products or the like using Gudang Baru or other brands that have similarities in principle or in whole with the Gudang Garam brand,” the announcement read, quoted from CNBC Indonesia. In the event of a violation, a maximum imprisonment of four years or a maximum fine of IDR 2 billion may be imposed.

Previously, the company had also sued Ali Khosin on May 29, 2013 regarding trademark issues in Surabaya District Court. As a result, Gudang Garam was declared victorious by the Supreme Court, both criminal and civil. Ali Khosin was sentenced to 10 months in prison in the criminal case of the brand. Ali also lost the civil case.

Importance of Trademark Registration

Learning from the Gudang Garam VS Gudang Baru case, it is important for business owners and start-ups to officially register their trademarks. Thus, the trademark owner is entitled to exclusive rights granted by the state for a certain period of time. For this right, the trademark owner is entitled to file a lawsuit if there are other parties who use the trademark without the permission of the trademark owner, even to the point of causing potential losses. In the case above, it is also mentioned about well-known trademarks whose determination requirements have been regulated in Permenkumham No. 67/2016. Where, the criteria for determining well-known trademarks as referred to in Article 16 paragraph 2 is done by taking into account the general knowledge of the public about the trademark in the relevant field of business. As for determining the criteria of famous trademarks as referred to in paragraph 1 is done by considering:

The level of public knowledge or recognition of the Trademark in the field of business concerned as a well-known Trademark;
The volume of sales of goods and/or services and profits derived from the use of the mark by its owner;
The market share controlled by the Trademark in relation to the circulation of goods and/or services in the community;
Regional range of use of the Mark;
The period of use of the Mark;
The intensity and promotion of the Brand, including the value of investment used for such promotion;
Trademark registration or application for trademark registration in another country;
The success rate of law enforcement in the field of Trademarks, particularly regarding the recognition of the Trademark as a well-known Trademark by the authorized agency; or
The value attached to the Trademark obtained because of the reputation and quality assurance of the goods and/or services protected by the Trademark.

KH Contact

This is the explanation of the trademark dispute case that occurred between two companies Gudang Garam cigarettes and Gudang Baru cigarettes (Gajah Baru). Indeed, nowadays, we often encounter various kinds of trademark dispute cases. In these cases, of course, the parties involved face each other to fight over the ownership of legitimate trademark rights. Well, to avoid similar cases, immediately register your trademark officially to the DJKI Kemenkumham! Don’t forget to check the remaining validity period of the trademark and extend the trademark.

To do so, you can leave it to Kontrak Hukum. Through the services available, you can help business owners to register and renew their trademarks, without hassle and certainly done! For information on services and reservations, visit this page. If you have further questions about other business needs, you can also consult for free at Tanya KH, or send a Direct Message (DM) to Kontrak Hukum’s Instagram social media account @kontrakhukum.