Protection of Well-Known International Trademarks in Indonesia: Gain Insights from PUMA SE Cases

In January 2023, PUMA filed a trademark cancellation lawsuit to the Central Jakarta District Commercial Court. PUMA disputed with Reno Mustopoh regarding the existence of PUMA trademark registration for mosquito-repellent goods. This case is registered with case register number16/Pdt.Sus-HKI/Merek/2023/PNNiagaJkt.Pst by entrusting its legal counsel to Mr. Nabil Baswel, S.H., who is an Advocate and Senior Associate of Am Badar & Am Badar. Read this article in full to get insight into the protection of trademark law for internationally recognized trademarks in Indonesia.

 

Trademark Dispute Case

PUMA SE has earned a public claim as an internationally renowned company. For this claim, PUMA SE must maintain its reputation by providing quality products. To keep the quality and authenticity of its products, PUMA SE does not allow other parties to use the PUMA brand arbitrarily as its business trademark. It is intended so that consumers do not wrongly suspect that PUMA SE is issuing new products or counterfeit products whose quality does not match the standards of the original company. It will harm PUMA SE because its consumers can move to other manufacturers.

PUMA SE has registered its trademark internationally in various countries, including Indonesia, so it is categorized as a well-known trademark. As the owner of a well-known trademark, PUMA SE has the right to sue and cancel the trademark that has similarities with its trademark even though the trademark owned by the other party has been registered for the class and type of goods that are not similar.

It happened to a mosquito repellent manufacturer called PUMA, whose trademark has been registered since 2009 at the Ministry of Law and Human Rights with the register number IDM000229381 and has obtained a trademark certificate. The brand was sued by PUMA SE (a sports equipment manufacturer) at the Central Jakarta Commercial Court because of some similarities in the name and logo.

Reno Mustopoh, as the defendant, then argued that his party had acted in good faith and had no intention to plagiarize the famous trademark. This is evidenced by the registration filed for the type of goods mosquito repellent in class 5, which differs from the shoe found in class 25.

 

Trial Result

For the judge’s consideration, PUMA SE is a well-known trademark because it has been registered internationally in various countries, including Indonesia. Thus, PUMA SE has the right to sue and cancel the trademark that has similarities with its trademark even though the other party’s trademark has been registered for the class and type of goods that are not similar. The judge of the Central Jakarta Commercial Court then granted the Plaintiff’s claim with the following details:

  1. Granting the Plaintiff’s claim in its entirety;
  2. Declare that the Plaintiff is the owner and the first registrant in the international world for the mark “PUMA &Cat Jumping” in various countries in the world;
  3. Declare the mark “PUMA & Cat Jumping” owned by the Plaintiff as an internationally recognized mark;
  4. Declare the mark “PUMA & Cat Jumping” registered No. IDM000229381 in the name of Defendant to be substantially or entirely similar to the mark of “PUMA & Cat Jumping” owned by Plaintiff;
  5. Declare the mark “PUMA & Cat Jumping” Registration No. IDM000229381 in the name of the Defendant was applied for enrollment based on bad faith;
  6. To declare as null and void the registration of the mark “PUMA & Cat Jumping” register No. IDM000229381 on behalf of the Defendant in the General Register of Marks, at the Ministry of Law and Human Rights of the Republic of Indonesia c.q. Directorate General of IP c.q. Directorate of Trademarks and Geographical Indications (Co-Defendant), with all its legal consequences;
  7. Order the Ministry of Law and Human Rights of the Republic of Indonesia c.q. Directorate General of IP c.q. Directorate of Trademarks and Geographical Indications (Co-Defendant) to obey the decision of the Commercial Court at the Central Jakarta District Court by canceling the trademark “PUMA & Cat Jumping” register No. IDM000229381 on behalf of the Defendant from the General Register of Trademarks;
  8. Punish the Defendant to pay court costs according to law. With this decision, PUMA SE (manufacturer of sportswear and equipment), accompanied by Mr. Nabil Baswel, S.H. as the attorney of Am Badar & Am Badar, was declared victorious against the PUMA trademark owned by Reno Mustopoh in this trademark dispute case.

 

Legal Insights 

As we can see in the case of trademark disputes between the well-known trademark, PUMA SE, against Reno Mustopoh, who also has a trademark named PUMA can be evidence that the rules of trademark law in Indonesia have been able to provide legal protection against internationally famous trademarks registered in Indonesia.

It can be seen through the case that has been traced in the Indonesian Judiciary, even for goods/services are not similar through the decision of the Commercial Court, which granted the lawsuit that we filed as the Attorney General of the Plaintiff for the whole.

Given the urgency of the legal protection of trademarks for companies, AmBadar & Am Badar provides one of the legal services in the field of trademarks. Our trademark legal services provide trademark search, trademark registration, monitoring the use of trademarks, and filing a lawsuit against other parties who misuse your trademark. If you need legal services for your various IP needs, please do not hesitate to contact us at ambadar@ambadar.co.id

 

 

 

References:

news.detik.com

sipp.pn-jakarta.go.id

news.detik.com

about.puma.com

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