Central Jakarta Commercial Court Decides on YOSHIKAWA & Logo of Yoshikawa Corp. As a Well-Known Mark and Cancels YOSHIKAWA Trademark Registration in Class 21 in the name of Local Registrant

Some businesses are so successful that their brand becomes so well-known and loved by many consumers all over the world because their products are simply of high quality and affordable to the masses.

But sometimes those brand owners forgot if they have properly protected their brand as trademarks from some bad faith infringers trying to free-ride the reputation of their well-known trademarks by unlawfully registering the trademarks in their respective countries.

As a rule of thumb, it is necessary to register your trademark before or as soon as you start your own business. But, what happens if somebody registers your trademark in their own country without your authorisation or permission?

In most cases, the available options are either you ask them to return their trademark registration to you, or, you simply need to consider filing a cancellation lawsuit if the former option fails.

Background Story

Yoshikawa Corporation (hereinafter Plaintiff) is a Japanese company which has been internationally recognised as the manufacturer of premium quality cookware and kitchenware for the last 70 years.

They started their business as Yoshikawa Metal Co., Ltd in 1946 and then established Yoshikawa Factory in 1952, which was later known as Yoshikawa Corporation located in the city of Tsubame of Niigata Prefecture, Japan.

Plaintiff’s main products are mainly stainless steel cookware and kitchenware such as Cook-Pal Ren, and Cook-Pal Tools, which have been marketed for years to various countries such as Japan, Korea, China, the United States of America, Canada, Australia, Singapore, Malaysia, Thailand, Philippines, India and 27 European Union Countries. Plaintiff has also registered their trademark YOSHIKAWA (which is also their company name) & Logo in those countries.

Consumers in the regions are already familiar with the YOSHIKAWA brand as the origin of high-quality premium products of stainless steel cooking ware and kitchenware.

Problem Arises

An Indonesian national goes by the name SM (hereinafter Defendant), who was also probably aware of the notoriety or existence of YOSHIKAWA brand, registered the same trademark and logo of Plaintiff’s trademark on June 14, 2002, under registration no. IDM000332132 for the goods in class 21. He is also known to be filing or registering the YOSHIKAWA trademark in other classes as well as other Japanese sound-like words trademarks.

Defendant seems to be actively using the trademark for selling their products in the Indonesian online marketplaces.

Cancellation Lawsuit

On June 14, 2022, through their attorneys from the Office of Pulungan, Wiston & Partners, Plaintiff filed a cancellation lawsuit to the Commercial Court at Central Jakarta’s District Court under Docket No. 02/Pdt.Sus-Merek/2022/ PN.Niaga.Jkt.Pst against trademark YOSHIKAWA & Logo registration no. IDM000332132 dated December 16, 2021, for the goods in class 21.

A. The Grounds for Cancellation Lawsuit

Plaintiff based the cancellation lawsuit on Article 76 paragraph (2) of Law No.20/2016 on Trademarks & Geographical Indications which allows the owner of an unregistered trademark to file a cancellation lawsuit against an owner of a registered trademark after filing a trademark application.

The owner of an unregistered trademark means the owner of a well-known mark or someone who has a trademark in good faith but has not registered their trademark in Indonesia.

Although Article 77 paragraph (1) of the same law requires that a cancellation lawsuit be submitted within the period of 5 years from the registration date, paragraph (2) of the same Article also provides that the cancellation lawsuit can still be filed without a time limit if the registered mark is found to be filed in bad faith and/or contravening the state ideology, laws and regulations, morality and religion.

B. History of Plaintiff as the Owner of Trademark YOSHIKAWA & Logo

As mentioned earlier, Yoshikawa Corporation is a Japanese company which has been internationally recognised as the manufacturer of premium quality cookware and kitchenware for the last 70 years.

C. Plaintiff as the Owner of A Well-Known Trademark YOSHIKAWA & Logo

Plaintiff’s trademark YOSHIKAWA & Logo with its variations has been registered and applied for registration in approximately 39 countries in Asia, Europe, and North America. In Japan itself, the trademark YOSHIKAWA & Logo has been registered since 1992.

D. Plaintiff Trademark YOSHIKAWA & Logo Registration in Indonesia

In compliance with Article 76 paragraph (2), Plaintiff has also filed their trademark YOSHIKAWA & Logo application no. DID2022001667 on January 7, 2022, for protecting goods in class 21, in Indonesia.

The registration, promotion and use of the trademark YOSHIKAWA & Logo in these countries at least for the last 30 years constitute a strong basis for Plaintiff to claim their rights as the owner of a well-known trademark in accordance with Article 21 paragraph (1) Letter b of Law No.20/2016 on Trademarks and Geographical Indications.

E. Similarities Between Plaintiff’s Trademark and Defendant’s Trademark

To prove the bad faith motive on the part of Defendant, Plaintiff pointed out the following similarities between Defendant’s trademark YOSHIKAWA & Logo registration no. IDM000332132 and Plaintiff’s YOSHIKAWA & Logo, i.e:

e.1 Visual Similarity

By simply looking at both trademarks, one can clearly understand that Defendant’s trademark YOSHIKAWA & Logo is very similar in whole or identical to that of Plaintiff’s. The visual similarity would certainly lead consumers to confusion regarding the origin of the trademark, especially since both marks use the same logo with the same font type.

e.2 Phonetical Similarity

Since both trademarks use the same Japanese word YOSHIKAWA both marks would definitively sound the same as a whole.

e.3 Similarity in the Coverage of the Protected Goods

Defendant’s trademark YOSHIKAWA & Logo covers the same kind of goods in class 21 as those protected by Plaintiff, especially for the cookware and kitchenware products.

F. As Defendant’s Trademark YOSHIKAWA & Logo Has Been Registered in Bad Faith, Trademark Registration No. IDM000332132 Must Be Cancelled

The similarities are so obvious that those who look at the mark can easily tell that Trademark YOSHIKAWA & Logo registration no. IDM000332132 has been filed in bad faith by Defendant which can confuse the general public regarding the origin of the trademark and the products.

Article 21 paragraph (3) of Law No.20/2016 on Trademarks and Geographical Indication provides that “an application shall be rejected if it is filed by an applicant with bad faith.”

The explanation of the above article reads that “what it is meant by ‘applicant with bad faith’ is an applicant who allegedly files a trademark application with the intention to imitate, to copy, or to follow other party’s trademark for the benefits of his/her own business, the act of which creates unfair competition, confusion, and misleads the consumers.

For example, a trademark application of words, devices, logos, or composition of colours which are the same as those of the other party, or a trademark that has been known by the general public for years, being copied in such a way that it will look similar in essence or in whole with the already known mark. From the aforesaid example, a bad faith intention has been established on the part of the applicant because the intentional copying of a known mark has at least been determined.”

By registering Plaintiff’s trademark YOSHIKAWA & Logo which has been widely known in the market, Defendant clearly wants quick money by simply hitchhiking the reputation and goodwill of Plaintiff’s trademark.

G. Plaintiff’s Trademark Constitutes A Part of Plaintiff’s Company Name

YOSHIKAWA constitutes a part of Plaintiff’s name which shall be protected in any country of the Union regardless of whether it forms part of a trademark or not (Article 8 of Paris Convention). This is a very important principle to protect the general public from being misled or confused regarding the origin of a trademark from a company that produces quality original products to fake ones.

Plaintiff’s Claims

With all the above Plaintiff’s argumentation as stated in the case docket, Plaintiff petitioned the court (1) to accept and grant all the plaintiff’s claims, (2) to declare Plaintiff’s trademark YOSHIKAWA & Logo as an internationally well-known trademark and a well-known trademark in Indonesia, (3) to declare that Plaintiff’s YOSHIKAWA & Logo trademark constitutes an essential part of Plaintiff’s company name, (4) to declare Plaintiff as the rightful and sole owner of trademark YOSHIKAWA & Logo, (5) to declare that Defendant’s trademark YOSHIKAWA & Logo registration no. IDM000331232 has similarities in whole with that of Plaintiff’s, (6) to declare that the act of registering trademark YOSHIKAWA & Logo registration no. IDM000332132 on November 3, 2011, and renewing the registration of the same on December 16, 2021, constitutes an act based on bad faith, (7) to declare the cancellation of Defendant’s trademark YOSHIKAWA & Logo registration in Indonesia and to order Co-Defendant to obey court’s decision by deleting Defendant trademark YOSHIKAWA & Logo registration from the general register of trademarks and announce the same in the official trademark gazettes, (8) to have Defendant pay all the incurred fees related to the court case.

Defendant’s Exception

A. Plaintiff’s Cancellation Lawsuit Has Expired

Defendant claims that their trademark YOSHIKAWA & Logo registration no. IDM000332132 has been registered since June 14, 2002, to protect goods in class 21, while Plaintiff’s Cancellation Lawsuit has only been filed on January 14, 2022. Since Law No. 20/2016 Article 77 paragraph (1) provides that the cancellation lawsuit can only be filed within the period of 5 years from the registration date, Plaintiff’s right to file a cancellation lawsuit has accordingly expired.

If Plaintiff’s cancellation lawsuit is based on bad faith, Defendant views that Plaintiff’s claims are legally groundless and are not factual because the Indonesia trademark registration system adopts the first-to-file principle, and Defendant was the first-to-file and registered trademark YOSHIKAWA & Logo registration no. IDM000332132 before Plaintiff. Consequently, Plaintiff cannot use Article 77 paragraph (2) as the ground for filing their Cancellation Lawsuit against him.

B. Defendant is the Owner and the First to Use of Trademark YOSHIKAWA & Logo in Class 21

Defendant claims that they are the first owner and user of the trademark YOSHIKAWA & Logo in class 21 in Indonesia because they have registered the trademark since 14 June 2002, while Plaintiff has only filed for trademark YOSHIKAWA & Logo application in 2022.

C. Defendant Trademark YOSHIKAWA & Logo Application is Based On Good Faith and Has Properly Examined By the Co-Defendant

Defendant also claims that trademark YOSHIKAWA & Logo registration no. IDM000332132 has been filed in good faith and has successfully passed the substantive examination by the Co-Defendant.

D. Plaintiff’s Cancellation Lawsuit is Filed Only 20 Years After Defendant’s Trademark YOSHIKAWA & Logo Has Been Registered

Defendant finds it odd that Plaintiff has only filed the Cancellation Lawsuit 20 years after Defendant’s registration of trademark YOSHIKAWA & Logo in Indonesia. Defendant believes that Plaintiff has a bad-faith motive in filing a Cancellation Lawsuit in order to hitchhike the existence and success of Defendant’s trademark YOSHIKAWA & Logo which have been built and promoted for so many years by Defendant in Indonesia.

E. Plaintiff’s Trademark is Not a Well-Known Trademark

Defendant argues that Plaintiff’s trademark YOSHIKAWA & Logo has only been registered recently in several countries within the period from 2016 and 2021. The registration of YOSHIKAWA & Logo in a number of European Union countries is only done recently and through Madrid Protocol which costs cheaper and faster. Plaintiff’s claim of trademark YOSHIKAWA & Logo as a well-known trademark is therefore not proven.

F. Plaintiff’s Trademark YOSHIKAWA & Logo is not a Well-Known Mark

Defendant argues that the fact that Co-Defendant registered Defendant’s trademark 20 years ago proved that Plaintiff’s trademark was not a well-known trademark. If it had not been so, Co-Defendant would not register it as a trademark in Indonesia. Even if Plaintiff has registrations in a bunch of countries, it does not prove that Plaintiff’s trademark is well-known.

The criteria of a well-known trademark should be in accordance with Article 18 paragraph (3) of Regulation of Minister of Laws & Human Rights No. 67/2016 which considers the following aspects of a well-known trademark:

f.1 the level of public knowledge or acknowledgement towards the trademark as a well-known trademark in the related field of business
f.2 sales volume of the goods/services or how much profit that the trademark owner gains from using the trademark
f.3 market share of the trademark in relation to the distribution of the goods/services
f.4 the area coverage of the trademark use
f.5 how long the trademark has been in use
f.6 the intensity and the promotion of the trademark including the investment value spent to promote the trademark
f.7 trademark registrations and/or applications in other countries
f.8 success rate in enforcing the trademark as a well-known trademark
f.9 the goodwill of the trademark achieved through the reputation and the quality guarantee for its goods and/or services

Considering the above criteria, Defendant believes and argues that Plaintiff’s trademark cannot yet be categorised as a well-known trademark.

G. Yoshikawa is Only a Name of a City in Japan

Defendant asserts that YOSHIKAWA is a name of a city in Japan and has been a common word so it cannot be monopolised by Plaintiff who claimed that YOSHIKAWA constitutes a part of Plaintiff’s company name.

Defendant’s Claims

Based on the above arguments, Defendant petitioned the judges of the commercial court to declare that Plaintiff’s Claim cannot be accepted; to reject all Plaintiff’s claims; and to punish Plaintiff by paying the incurred case fees according to the laws.

Commercial Court’s Legal Consideration

In its considerations of the lawsuit, the Commercial Court outlines three main subjects of the case:

(1) Are there similarities between Plaintiff’s trademark and Defendant’s trademark?

Considering the visual, phonetical and coverage of goods, the court decides that similarities do exist between the two marks.

(2) Does Plaintiff’s Mark Constitute a Well-Known Trademark?

A well-known trademark under the Explanation of Law No.20/2016 can be based on the following aspects:

The Public knowledge of the trademark in the related field of business
The reputation of the mark as a result of substantive promotion efforts
The investment spent by the trademark owner in several countries
Evidence of trademark registrations in several countries in the world
Independent survey as appointed by the commercial court

Based on the evidence of trademark registrations, provided by Plaintiff, the court views that Plaintiff’s trademark has been widely distributed and has achieved global market share.

Based on the evidence of advertisements provided by Plaintiff, the court views that massive efforts to promote the Plaintiff trademark have achieved a great reputation among the general public which means that Plaintiff has invested a lot of money in building the reputation and public acknowledgement for their trademark.

(3) Has Defendant’s Trademark Been Filed in Bad-Faith?

Plaintiff views that although Plaintiff’s trademark has only been filed in Indonesia 20 years after the registration of Defendant’s trademark in 2002, Plaintiff’s trademark has actually been filed in the home country Japan as far back as 1992.

And in considering that similarities in whole have been found between Defendant’s trademark and Plaintiff’s trademark, the court decides that Defendant’s trademark was filed in bad faith.

Regarding the expiration of filing a cancellation lawsuit, the court views that although there is a five-year deadline to file a cancellation lawsuit, the Trademark Law still provides the opportunity for the true and rightful owner of a trademark to reclaim their rights by filing a cancellation lawsuit on the ground of bad faith and other reasons provided by the law.

In further consideration, the court refers to the Jurisprudence of Supreme Court No.220/ Panitia Kreditur/Perd/1986 dated 16 December 1986 which suggested that Indonesian nationals shall use trademarks that reflect Indonesian national identity and shall avoid the use of trademarks that are similar or copying foreign trademarks.

Concerning the first-to-file principle, the court views that its implementation is not an absolute one. As long as the cancellation lawsuit is in compliance with the provisions of Law No. 20/2016 on Trademarks and Geographical Indication, there is still an opportunity for the rightful owner of trademarks to reclaim their rights.

Commercial Court’s Decision

The judges decided in favour of the Plaintiff’s claim and to be

Granting all the plaintiff’s claims,
Declaring Plaintiff’s trademark YOSHIKAWA & Logo as a well-known trademark
Declaring Plaintiff’s YOSHIKAWA & Logo trademark constitutes an essential part of Plaintiff’s company name,
Declaring Plaintiff as the rightful and sole owner of trademark YOSHIKAWA & Logo,
Declaring that Defendant’s trademark YOSHIKAWA & Logo registration no. IDM000331232 has similarities in whole with the Plaintiff’s trademark
Declaring that the act of registering trademark YOSHIKAWA & Logo registration no. IDM000332132 on November 3, 2011, and renewing the registration of the same on December 16, 2021, constitute an act in bad faith,
Declaring the cancellation of Defendant’s trademark YOSHIKAWA & Logo registration with its renewal from the general register of trademarks
Ordering the Co-Defendant to obey the court’s decision by deleting Defendant trademark YOSHIKAWA & Logo registration from the general register of trademarks and announce the same in the official trademark gazettes,
Having Defendant pay the incurred case fee in the amount of IDR 1,240,000.-

The decision was made by the assembly of judges on June 29, 2022, in the presence of Plaintiff and Defendant, and in the absence of the Co-Defendant.

Cassation Petition to the Supreme Court

Unhappy with the Commercial Court’s Decision, Defendant immediately filed an appeal to the Supreme Court (Cassation Petition) on July 11, 2022, and was docketed under Cassation Petition No. 17 K/Pdt.Sus-HKI/2022/PN.Niaga.Jkt.Pst juncto No. 02/Pdt.Sus-Merek/2022/PN.Niaga.Jkt.Pst.

The Cassation Memorandum from Defendant was followed and received on July 22, 2022. The Counter Cassation Memorandum from Plaintiff was received on August 11, 2022.

Supreme Court Decision

Having considered the subject case, the Supreme Court in its decision found that Judex Factie (the judges who examined the facts in the lower court) had implemented correctly the law.

Upon the above decision, the Supreme Court accordingly upheld the earlier court’s decision, rejected the Cassation Petition filed by the Defendant, and ordered him to pay the case fee in the amount of IDR 5,000,000.-

The Supreme Court’s ruling was decided on November 2, 2022, under no. 1489 K/Pdt.Sus-HKI/2022.

Takeaways

Although there is a five-year deadline to file a cancellation lawsuit, the Trademark Law still provides the opportunity for the true and rightful owner of a trademark to reclaim their rights by filing a cancellation lawsuit on the ground of bad faith and other reasons provided by the law.

The first-to-file principle in filing trademark registration should not be taken for granted and or be taken advantage of to register a trademark that does not belong to you. When there is an indication that a trademark has been filed and registered in bad faith, any true owners of trademarks have the opportunity to challenge DGIPR’s decision at the commercial court and file a cancellation lawsuit against the registered trademarks to reclaim their rights.

Proving similarities in whole is very important when determining whether a trademark has been filed in bad faith or not.

Worldwide distribution of goods and/or services, building a good reputation for your brand through massive promotion efforts, and registration of your trademark in as many countries as possible, are crucial elements if you want to establish a well-known trademark that stands against the infringers.