On December 20, 2022, an audio equipment manufacturing company from the United States, BOSE Corporation (will be called the Plaintiff), filed a trademark cancellation lawsuit through the Commercial Court at the Central Jakarta District Court against the registered Trademark Number IDM000992859 on behalf of the individual LIN LIWEN (will be called the Defendant). As a well-known company from the United States, Plaintiff entrusted Am Badar & Am Badar, represented by Lisa Karismawatie, S.H. and Nabil Baswel, S.H., as advocates from Am Badar & Am Badar in court. 

If compared, it cannot be denied that the use of the word as a brand by Defendant differs from that used by Plaintiff as a brand. Plaintiff himself used and registered the word "BOSE", which is part of the name of the legal entity and the name of the founder of the Plaintiff's legal entity. However, when compared thoroughly and in more depth, there is an allegation of intent and a form of bad faith on the part of the Defendant as the owner of the mark "" in registering his mark, namely the similarity in the appearance concept where the Defendant uses capital letters and an additional horizontal line attached to the first letter and the last letter is the same as the display concept of the Plaintiff's mark "". The existence of similarities in the display concept that is dominantly between Defendant's brand and Plaintiff's brand raises concerns about the confusion and difficulties for consumers in distinguishing Defendant's brand and product from Plaintiff's brand and product.

Whereas, in the case of the trademark cancellation lawsuit, the Panel of Judges decided to grant the lawsuit filed by the Plaintiff in its entirety with the following considerations:

1. Registration of the Plaintiff's mark registered in Indonesia is valid. It has binding legal force because documentary evidence already states that the Plaintiff's Trademark has been registered in the Republic of Indonesia, and the mark has never been revoked or cancelled by an authorized institution.
2. The Plaintiff's Trademark is well-known internationally because it has been used consistently and continuously in dozens of countries worldwide, including Indonesia.
3. There are similarities in substance or whole between the brands owned by Plaintiff and the brands owned by Defendant because when the two brands are compared, it cannot be denied that there are indeed similarities in principle which can be seen from the similarity in form and appearance which is due to the similarity in the placement of figurative elements dominance of the two brands. Both also do not create significant differences, and if these two brands are used for the same type of goods, then product placement in the same sales area can potentially deceive consumers.
4. Registration of the Defendant's mark was registered in bad faith because if Defendant wanted to compete healthily, Defendant should have been able to make or use words or other signs as his Trademark without having to imitate and/or use a written form of a Trademark similar to that of the Plaintiff.

Based on the judge's decision, with various considerations explained above, the trademark "", legally represented by Am Badar & Am Badar, is declared the winner of this trademark dispute case.

From this case, we can learn about the critical role of cross-border mark registration so that no one abuses the Trademark, which can lead to potential unfair business competition.

Therefore, we at Am Badar & Am Badar, as an IP Law Firm established five decades ago, provide registration services to monitor the protection of your intellectual property rights. We assist you in the registration process and mitigating the risk of future trademark disputes. If you need quality IP services, contact us via ambadar@ambadar.co.id 

 

 

 

 

 

References

sipp.pn

119/Pdt.Sus-Merek/2022/PN Niaga Jkt.Pst