In the competitive business world, brands are one of the most valuable assets for companies. A strong brand can create a unique identity, increase brand recognition, and, most importantly, support business growth.
However, with the opening up of the global market, new challenges related to brand protection also arise, especially in the context of disputes between local businesses and foreign companies. Brand dispute conflicts can arise from a variety of situations, ranging from the similarity of brand names to intentional and/or unintentional acts of copyright or brand infringement. Well, in this article, we will discuss in more depth some cases of trademark disputes between local businesses and foreign companies. Hopefully, it can be a lesson to not repeat similar incidents!
PUMA Brand VS PUMA Mosquito Coil Version
In April 2023, the German shoe and sporting goods company, PUMA sued the Indonesian mosquito repellent manufacturer “Puma” which has a trademark with registration number IDM000229381 on behalf of Reno Mustopoh. PUMA filed the lawsuit because Reno is considered to have registered the “Puma” trademark in bad faith. However, Reno argued that he did not have bad faith in registering his trademark. It also claimed that it had no intention to plagiarize the famous German brand under the pretext that the registration filed was for the protection of mosquito repellent in class 5 which is different from the type of protection of the PUMA shoe brand. The German shoe manufacturer apparently has its own view. It argues that although there are differences in class and product in the registration of the Puma mosquito repellent brand, it cannot be used as justification and the action is included in bad faith in registering the brand. It is known that the PUMA shoe brand currently still has registered trademarks in several countries that are still active, including in Indonesia. This has led to stronger public knowledge about the Puma brand which resulted in Puma proving to be a well-known trademark in accordance with the provisions of the Permenkumham on trademark registration. With its status as a well-known trademark, PUMA has the right to prohibit the registration of similar trademarks for any product or service. This is in line with the contents of the decision delivered by the panel of judges as follows:
- Declare Puma of Germany as a well-known brand and as the owner and first-time registrant in various countries around the world.
- Stating that the Indonesian mosquito repellent brand Puma is substantially or wholly similar to the famous mark.
- Declared void the application of Puma’s trademark for mosquito repellent products because it has registered the trademark in bad faith.
Not only that, the decision also changed the registration status of the Puma mosquito repellent brand to “Canceled”. That way, the use of the Puma brand is officially prohibited or must obtain prior permission from PUMA from Germany if you want to use the Puma brand.
HUGO BOSS Brand vs Local Hugo
HUGO BOSS has been marketing its products since 1924. Currently HUGO BOSS produces men’s suits, jackets, coats, shirts and trousers. While in Indonesia, HUGO BOSS has registered its brand since 1989. As reported by the Supreme Court website, the case began when HUGO BOSS sued the local Hugo owned by Anthony Tan. The series of brands in question are Hugo Select Line, Hugo Selectline + Painting, Hugo Selection, Hugo Classic and Hugo Man, Hugo Active and Hugo Street. The German fashion company did not accept its trademarks being plagiarized by Anthony Tan and asked the court to cancel the defendants’ registered trademarks. On January 4, 2021, the Commercial Court at the Central Jakarta District Court (Jakpus District Court) rejected the HUGO BOSS lawsuit. The head of the panel considered that there was a distinguishing power between the Plaintiff’s trademark and the Defendant’s trademark in terms of appearance, pronunciation, placement, and differences in speech sounds so that the trademarks could not be said to have similarities in essence. For this reason, HUGO BOSS did not accept and filed an appeal. The appeal was granted. The cassation was granted. The Supreme Court declared the German HUGO BOSS trademark as a registered trademark that has been legally registered for the first time in Indonesia in 1989. The Supreme Court also canceled the local Hugo brand.
Lexus vs Prolexus brand
The Lexus brand is known as a luxury car manufacturer that offers vehicles with the latest technology and unparalleled style. On the other hand, Prolexus is a company that focuses on shoe products. The case began when Lexus manufacturer Toyota Kabushiki Kaisha filed a lawsuit at the Central Jakarta District Court (Jakpus District Court) against ProLexus. The world-class car company submitted evidence of a trademark certificate issued by the Ministry of Law and Human Rights on June 11, 2012. It considers Prolexus aims to hijack the well-known Lexus brand. However, in the trial all the facts were revealed. Based on the Supreme Court Decision Number 450K/Pdt.Sus-HKI/2014, the Lexus car company must accept the fact of its defeat on the basis that Prolexus was not proven to register its trademark in bad faith.
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This is because the Prolexus brand has long been registered at the Ministry of Law and Human Rights or precisely on September 29, 2000 for the qualification of shoes / sandals. More than a decade before Lexus registered its brand. As a result, on March 18, 2014, the District Court did not accept this lawsuit and its appeal to the Supreme Court was rejected.
What are the Lessons Learned?
The presence of brands has an important role in trading activities. In addition to being a differentiator with other products, the brand can be the basis for the development of modern trade whose scope includes the reputation of the use of the brand (goodwill), as a symbol of quality and quality standards that can penetrate all types of markets. In Indonesia itself adheres to the first-to-file system in the trademark registration system, where a person who makes an application and the application is accepted first will obtain rights to the registered trademark. Therefore, in accordance with Article 21 of Law Number 20 Year 2016 on Trademarks and Geographical Indications, a trademark cannot be registered when the trademark is substantially or entirely similar. In this case, the similarity creates an impression of similarity, either regarding the form, the way of placement, the way of writing or the combination of elements, as well as the similarity of speech sounds, contained in the mark. However, the use of similar trademarks can actually be registered, provided that both are in different trademark classes. This provision is regulated in Government Regulation Number 24 Year 1993 on the Class of Goods or Services for Trademark Registration (GR 24/1993). Trademark Class is a grouping of a field of business carried out by a trademark and acts as a limitation of rights to the use of a trademark. Based on PP 24/1993, there are 45 different classes of goods and services. In the trademark registration process, the applicant will be required to determine the trademark class that will be used for the trademark.
KH Contact
Such is the explanation of the examples of trademark dispute cases that occur between local entrepreneurs and foreign companies. Indeed, nowadays, we often encounter various kinds of trademark dispute cases. In such cases, of course, the parties involved face each other to fight over the ownership of legitimate trademark rights. Well, to avoid the same thing, immediately register your trademark officially to DJKI Kemenkumham! Don’t forget to do a trademark analysis before doing so. READ ALSO:
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To take care of it, you can leave it to Kontrak Hukum. We can help business owners to register trademark through analysis process first, thus minimizing the risk of dispute. For information on ordering services, please visit the KH Services – Brand page. If you have other business needs, you can also consult for free at Ask KH or send a direct message (DM) to Instagram @kontrakhukum.
