The Supreme Court of the Republic of Indonesia Upholds the Decision of the Central Jakarta Commercial Court: JOYKO Local Brand On Behalf of PT. Atali Makmur Declared as a Well-Known Trademark in Indonesia & Cancellation of Trademark Registration JOYKO and JOYCO in Class 01 on behalf of PT. Tong Shend Ind.

Jakarta,May 2, 2024By

Introduction

Having a well-known trademark is a dream for many brand owners because it is not easy to get a prestigious status. Becoming a well-known trademark cannot be achieved in a short time with a limited budget and poor strategies.

In various aspects of daily life, if one wants to be well-known in the world of politics, entertainment, on social media, especially in business, one needs to appear as often as possible, for as long as possible, and to as many people as possible.

This also applies to trademarks. Through various promotional media, advertising, strong distribution and marketing networks, trademark owners have the opportunity to introduce their trademarks so that consumers really know, like and remember their goods and services.

With strategic planning and budgeting of effective promotional and marketing campaigns, giving birth to a well-known brand is inevitable over time.

There is a lot of evidence in Indonesia. For one thing, the INDOMIE trademark was nothing when it first appeared in the early 70s. Now, who doesn’t know INDOMIE in Indonesia, even in many countries in the world?

The Risk of Being A Well-Known Trademark

Unfortunately, in Indonesia there is business behavior that is not exemplary and tends to violate the law. When a trademark becomes well-known (or is already well-known) in Indonesia, local business people cleverly begin to imitate and shamelessly riding on the popularity of the well-known brand’s products by producing and marketing various similar or similar products in order to obtain maximum financial benefits without effort.

There are those who dare to openly plagiarize well-known trademarks or even directly register them with the Director General of IP. There are also those who simply create alternative trademarks that are ” similar ” or “inspired” by a well-known trademark.

For plagiarists who more or less know that trademark protection is processed based on the classification of classes of goods and services, they think that there is still an opportunity to register trademarks similar or the same as well-known trademarks in a different class(es).

Trademark JOYKO

The JOYKO trademark has been owned and registered as a trademark by PT. Atali Makmur, manufacturer of stationery and office equipment for approximately 20 years. The popularity of the JOYKO trademark among consumers of stationery and office supplies has made it one of the TOP Brands from trusted survey institutions.

So well-known and familiar to stationery and office users that JOYKO products can be found easily, from small shops to large bookstores in Indonesia such as Gramedia, Gunung Agung, and so on.

That’s in Indonesia alone. Products from the JOYKO trademark have actually penetrated the international world for a long time and have been registered in many countries.

In the eyes of consumers, JOYKO products are known to be of good quality and it is not surprising that JOYKO has become a favorite brand among students, young professionals and the general public.

On the other side of this success, JOYKO’s popularity has also invited parties who are trying to make quick profits by taking inspiration from the popularity of the JOYKO trademark.

Even though they do not openly imitate the JOYKO trademark by producing and selling the same goods in the same class as the majority of JOYKO products, they try to register and use goods that are categorized as similar to PT. Atali Makmur’s JOYKO products, but in a different class.

Legal Efforts to Cancel the Registration of the JOYKO/JOYCO Trademark in Class 01

PT. Atali Makmur is the exclusive rights holder, the first-to-use, the rightful owner and the sole proprietor who is entitled to the “JOYKO” trademark in Indonesia which has also been registered with the Ministry of Law & Human Rights of the Republic of Indonesia, the Directorate General of Intellectual Property to protect various kinds of goods, including ” Glue/Glue” which is classified in class 16, under Registration No. 492626 dated 12 December 2000 renewed under no. IDM000244806, with a validity period until 12 December 2030.

During the investigation, it was discovered that currently in the General Register of Trademarks there are 3 active trademark registrations which are essentially the same as the JOYKO trademark owned by PT. Atali Makmur in class 16. These brands are registered by PT. TONG SHEND IND in a different class, namely class 01 for “glue for industry” goods, which are as follows:

PT. Atali Makmur, through his attorney from the Law Firm PULUNGAN, WISTON & PARTNERS, filed a Lawsuit for Cancellation of the Registration of the JOYKO Trademark Register No. IDM000927718, JOYCO Brand Register No. IDM000592578, and JOYKO GLUE Brand Register No. IDM001054174, on behalf of PT. TONG SHEN IND.

Legal Basis and Contents of the Trademark Registration Cancellation Lawsuit

PT. Atali Makmur (Plaintiff) filed a lawsuit against PT. TONG SHEN IND (Defendant) and the Directorate General of Intellectual Property cq Directorate of Trademarks & Geographical Indications (Co-Defendant), on the following grounds:

As an Interested Party, Article 76 paragraph (1) in conjunction with (2) the Trademark and Geographical Indications Law;
Elements of Bad Faith, Article 77 paragraph (2) and Article 21 paragraph (3) of the Trademark and Geographical Indications Law

In its lawsuit, the Plaintiff submitted its claims regarding the facts about the Plaintiff’s trademarks; facts about the Plaintiff’s trademark as a well-known trademark; facts about the similarities in principle between the well-known JOYKO trademark owned by the Plaintiff and the Defendant’s JOYKO and JOYCO trademark; the facts that the goods “glue” class 16 of the JOYKO brand belonging to the Plaintiff and the goods “glue” class 01 of the brands JOYKO and JOYCO belonging to the Defendant are of the same kinds; and the facts that the Defendant registered the marks in bad faith (Article 21 Paragraph (3) of the Trademark Law).

a. Plaintiff’s Marks

The plaintiff is the exclusive rights holder, the first-to-use, the rightful owner and the sole proprietor who is entitled to the mark “JOYKO” in Indonesia, under Registration No. IDM000244806, with a validity period until 12 December 2030.

However, apart from goods in class 16, the Plaintiff has also registered the JOYKO trademark in various other classes such as in classes 01, 02, 04, 05, 07, 08, 09, 10, 11, 13, 14, 15, 15 , 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 , 42, 43, 44, and 45.

Not only in Indonesia, the JOYKO trademark has also been registered in various countries in the world such as China, the European Union Intellectual Property Office (EUIPO) which consists of the countries Austria, the Netherlands, Belgium, Bulgaria, the Czech Republic, Denmark, Estonia, Finland, Germany, France, Hungary, Ireland, Italy, Croatia, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Cyprus, Slovakia, Slovenia, Spain, Sweden, Greece, Hong Kong, Korea, Singapore, United Kingdom, Malaysia, India .

At a considerable cost and over a long period of approximately 20 years, the Plaintiff has attempted to trade and promote the JOYKO trademark so that the brand has become well known, liked and sold well in all corners of Indonesia.

Apart from being widely promoted and sold in conventional shops, both small and large, JOYKO products are also sold online both through its own website ( https://www.joyko.co.id/ ) and through official social media accounts ( https://www.instagram.com/titi.joyko/ ).

Consistently, the Plaintiff also publishes advertisements for promotions published in magazines/books, advertisements/billboards, advertisements/signboards, brochures and JOYKO product catalogues.

With this hard work, it is not surprising that the JOYKO trademark, since 2000, has succeeded in obtaining various recognized awards and appreciation such as the Top Brand Survey award from Frontier Consulting every year from 2014 to 2021, as well as exposure in various News/Award News First Level every year starting from 2015 to 2021.

b. Plaintiff’s Mark as a Well-known Mark

To be categorized as a well-known trademark, the trademark owner cannot simply claim that the brand is well-known. There are criteria that must be met as regulated in Ministry of Law Regulation No. 67 of 2016) jo. Minister of Law and Human Rights Regulation Number 12 of 2021. These criteria are:

the level of public knowledge or recognition of the brand;
volume & sales of goods and/or brands;
market share;
regional range of use of the brand;
term of use of the brand;
intensity and value of promotion;
application or registration of a trademark in another country;
success rate in law enforcement;
the value attached to a brand that is acquired because of its reputation

The criteria above are alternative in nature, where if one of the provisions is fulfilled then juridically the legal provisions are deemed to have been fulfilled.

Regarding the level of knowledge and volume and reach of brand sales that have been met by the Plaintiff as proven in the results of surveys conducted by the Frontier Group Survey Institute, “MARKETING”, “MEDIAWAVE”, “INDONESIA DIGITAL POPULAR BRAND (IDPBA)”, “TRAS N CO INDONESIA” ” and “INFOBRAND.ID” in 2014, 2015, 2016, 2017, 2018 and 2021.

The survey was carried out for the categories Paper Clip, Binder, Eraser, Mechanical Pencil, Loose Leaf, Date Stamp, Pencil Sharpener, Typex, Paper Cutter, Ballpoint and Pencil which was carried out in several big cities in Indonesia, where based on the results of the survey it was concluded that the Plaintiff’s “JOYKO” Brand occupies the top position overall in Indonesia.

The popularity of a trademark is based on the Republic of Indonesia Supreme Court Decision No. 1486 K/Pdt/1991 dated 05 November 1995 which has become Permanent Jurisprudence where if it is proven that a mark has been registered in many countries in the world, then it is qualified as a well-known mark because it has circulated to borders outside its country of origin.

With evidence of JOYKO trademark registration in many countries, there is no doubt that the Plaintiff’s “JOYKO” Mark can be categorized as a WELL-KNOWN TRADEMARK in accordance with the applicable provisions and criteria.

c. Similarities in Principle Between the Plaintiff’s Trademark and the Defendant’s Trademark

It is not too difficult to immediately see the visual similarities (appearance of writing), pronunciation, and the kinds of goods/services between JOYKO Trademark owned by the Plaintiff and JOYKO/JOYCO trademarks owned by the Defendant.

The similarities mentioned above are so close that they can be misleading to the public who will think or believe that these marks come from the same source, which in reality is not true at all and there is no relationship of any kind between the Plaintiff and the Defendant .

Therefore, it is very reasonable for the Plaintiff to request that the registration of the Defendant’s trademarks be canceled and removed from the General Register of Trademarks.

d. The Goods “Glue” in Class 16 of the Plaintiff’s JOYKO Trademark and the Goods “Glue” Class 01 of the Defendant’s JOYKO and JOYCO Trademark Are of the Same Kind

The fact of the similarity between the kinds of goods “Glue” in Class 16 of the Plaintiff’s JOYKO trademark and the goods “Glue” in Class 01 of the Defendant’s JOYKO/JOYCO Trademarks is an important point in this cancellation lawsuit, as is also related to the point of fame of the Plaintiff’s JOYKO trademark.

Article 17 paragraph (2) Permenkumham 67 of 2016) jo. Minister of Law and Human Rights Regulation Number 12 of 2021, regulates the criteria for similarity of the kind of goods/services between trademarks as follows:

the nature of the goods and/or services;
purpose and method of use of goods;
complementarity of goods and/or services;
competition for goods and/or services;
distribution channels for goods and/or services;
relevant consumers; or
origin of production of goods and/or services.

Based on one or more of the criteria above, the element of similarity of the kind of goods regarding the “nature of the goods and/or services” has been fulfilled because the Plaintiff’s “glue” in class 16 of Trademark JOYKO and the Defendant’s “glue” in class 01 of Trademark JOYKO/JOYCO, both have the same characteristic, namely “gluing”.

Regarding the “purpose and method of using the goods”, it has been fulfilled because the Plaintiff’s “glue” in class 16 of Trademark JOYKO and Defendant’s “glue” in class 01 of trademarks JOYKO/JOYCO have the same purpose, namely as an adhesive (GLUE). Where the Plaintiff’s class 16 glue product is intended for office equipment glue, the Defendant’s class 01 glue product is industrial glue such as PVC glue, epoxy glue, iron glue, glass glue, etc. which have the same purpose or the same function, namely to glue. Including the method of use is also the same, namely both are applied to the products or media that will be glued.

To prove the application of similar criteria in previous legal decisions, the Plaintiff refers to several decisions from the Decision of the Chairman of the Trademark Appeal Commission and Members of the Trademark Appeal Commission, and the Decision of the Trademark Director. As a comparison, several legal considerations of the Supreme Court Cassation decision are also referred to, such as:

The HOLLAND Mark in goods class 30 (Bakery products) is substantially similar to similar goods/services with the HOLLAND BAKERY Mark which protects service class 35 (Bakeries);

The NATASHA Mark in goods class 03 (cosmetic powder, fragrances, perfumes, hair oils) has essentially the same goods/services as the NATASHA Mark which protects service class 44 (beauty salons, skin care and beauty care including cosmetics and others -other);

The above evidence and jurisprudence have sufficiently proven and are beyond doubt that the Plaintiff’s goods “GLUE” which is classified in class 16 of trademark JOYKO is the same kind to the Defendant’s goods “glue” which is classified in class 01, as explained in article 17 paragraph (2) Minister of Law and Human Rights Regulation 67/2016 concerning Trademark Registration Jo. Minister of Law and Human Rights Regulation No. 12 of 2021 concerning Amendments to Minister of Law and Human Rights Regulation No. 67/2016 Regarding trademark registration.

e. The Defendant’s Trademarks Have Been Registered in Bad Faith

The lawsuit for cancellation filed by the Plaintiff is also based on the provisions of Article 21 paragraph (3) of Law no. 20 of 2016 concerning Trademarks and Geographical Indications determines that an application is rejected if it is submitted by an applicant who has bad intentions.

Considering the fact of the popularity of the JOYKO trademark, the Plaintiff believes that the registration of the “JOYKO” and “JOYCO” trademarks by the Defendant through the Co-Defendant was carried out “INTENTIONALLY” based on the Defendant’s bad faith to imitate, plagiarize and follow the Plaintiff’s “JOYKO” trademark. Bearing in mind that the Defendant has basically RECOGNIZED and KNEW that these marks were inspired by the Plaintiff’s “JOYKO” trademark.

The choice of the same trademark shows bad intentions, namely wanting to piggyback on the notoriety of a brand which can mislead consumers regarding the origin of the JOYKO goods or products.

Based on the grounds of the lawsuit and the evidence as described above, it is hopeful that the decision of the Chairman of the Central Jakarta Commercial Court cq the Panel of Judges who tried the case be consistent or in line with legal considerations in previous jurisprudence.

Commercial Court Decision on the Cancellation Lawsuit Against JOYKO/JOYCO Trademarks Registered by the Defendant

Regarding the cancellation lawsuit no. 41/Pdt.Sus.Brand/2023/PN. TRADE. JKT.PST, the Commercial Court at the Central Jakarta District Court, on August 8 2023 decided:

Grant the plaintiff’s lawsuit in its entirety
Declare that the “JOYKO” trademark owned by the Plaintiff is a Well-known Mark in Indonesia
Declaring the Plaintiff as the sole owner and the only one who has the right to use “JOYKO” in Indonesia to differentiate the Plaintiff’s production products from those of other parties;
Declare that the trademarks “JOYCO” Registration No. IDM000592578, July 28 2017, in class 1, “JOYKO” Registration No. IDM000927718, December 02, 2021, in class 1, “JOYKO” Registration No. IDM001054174, dated 31 January 2023, in class 1, in the name of the Defendant, are similar in essence and/or in its entirety to the “JOYKO” mark owned by the Plaintiff;
Declare that the Defendant’s action in applying for registration of its trademarks was done in bad faith because it imitates the Plaintiff’s “JOYKO” trademark;
Declare the cancellation of the Defendant’s trademarks in the General Register of Trademarks of the Directorate General of Intellectual Property with all the legal consequences;
Order the Co-Defendants to submit and obey the Court’s decision in this case by canceling the registration of the Defendant’s trademarks;
Punish the Defendant by paying court costs

Based on the decision of the commercial court, the Defendant, through his Attorney, submitted a cassation request to the Supreme Court on 21 August 2023 through the Deed of Statement of Cassation Application for the Verdict on Trademark Lawsuit Number 38 K/Pdt.Sus-HKI/2023/PN Niaga.Jkt.Pst juncto Number 41/Pdt.SusBrand/2023/PN Niaga Jkt Pst. This cassation application was followed by the submission of a cassation memorandum at the Commercial Court Registrar’s Office at the Central Jakarta District Court on 1 September 2023. Regarding the appeal of the cassation memorandum by the cassation petitioner (Defendant), the cassation respondent (Plaintiff) submitted a counter cassation memorandum on 18 September 2023.

Supreme Court Decision on the Defendant’s Cassation Application

On the cassation petition, the Supreme Court was of the opinion that:

Judex Faxie, in this case the Commercial Court at the Central Jakarta District Court, did not make a mistake in applying the law in its decision
that the Plaintiff’s Mark has been known in Indonesia since 8 October 2001 and is registered in many countries so that it can be categorized as a well-known mark
that the marks owned by the Defendant are substantially similar to the Plaintiff’s marks, both in terms of the way they are written and the type of letters used by both marks.
whereas based on the considerations above, it turns out that the decision of the Commercial Court at the Central Jakarta District Court in this case does not conflict with the law and/or statute, so that the cassation petition submitted by the Cassation Petitioner: PT. TONG SHEND IND must be rejected

Therefore, as in Decision no. 148 K/Pdt.Sus.HKI/2024, the Supreme Court judged by rejecting the cassation petition from the PT Cassation Petitioner. Tong Shend IND.

Conclusion

One of the strengths of a well-known trademark is its ability to protect its interests in goods and/or services across classes. This means that a mark that is already well known by the general public will find it easier to prevent or even cancel the registration by a third party of the same or substantially similar mark in different classes.

Similarity in the kinds of goods and/or services is a very important issue for every trademark owner to pay attention to, whether already registered or applying for a new trademark registration.

For those who already have a trademark registration in a particular class, they may be able to check whether there are any registrations or applications for registration in other classes which are similar in principle and of the same kind in the scope of goods/services with the registered trademarks they currently own.

For those who plan to submit a new registration application, it is appropriate to carry out a preliminary examination of trademarks not only in the class of goods/services you wish to apply for but also in other classes where there is potential for similarities to the goods/services to emerge. It is advisable that the Applicant should consult an Indonesian IPR Consultant who can provide legal advices accordingly.