AMR Partnership

NOT OVER TILL IT'S OVER: THE SUPREME COURT OVERTURNED ITS OWN CASSATION JUDGMENT ON SPARCO ( IP Updates 006/11


SPARCO, S.r.l., an Italian Company, can now feel relieved. After spending years battling for its rights in Indonesia upon the mark SPARCO, it is now the time for Italian company SPARCO S.r.l. to be relieved following an Indonesian Supreme Court decision in a Review to a Cassation Judgment proceeding, by which the company is declared the true proprietor of the mark.

The case began in 1997, when SPARCO S.r.l., through Amroos & Partners - in their efforts to claim its rights over SPARCO - filed a lawsuit against a local Indonesian businessman to the Commercial Court of Jakarta Pusat. The Plaintiff demanded for the cancellation of the trademark registration in the Directorate General of Intellectual Property Rights (DGIP) of the defendant's mark "SPARCO & Device" on the basis of bad faith for intentionally imitating the well known mark "SPARCO" for the goods of the same kinds in class 25, i.e. clothing. In support of the claim, The Plaintiff also put forward the fact that SPARCO is also the name of its company.

The Defendant denied the Plaintiff's claims and allegations, citing registration of the mark SPARCO under his name at the Directorate of Marks since January 27, 1988 as the main defence, while claiming also that he actually created the word SPARCO,for which he also managed to obtain Copyright registration at DGIP.

At the first instance, the Commercial Court of Central Jakarta decided in the plaintiff's favor and acknowledged SPARCO S.r.l.'s proprietary upon the mark SPARCO, event went as far as recognizing the mark in question as a well-known mark. The Court confirmed the essential similarity between the plaintiff's mark with that of the defendant's registered mark SPARCO & Device for the goods of the same kind, and accordingly ordered for the cancellation of the latter.

Dissatisfied, the defendant thus filed for cassation to the Supreme Court, persistently on the basis of having a prior registration of the mark SPARCO & Device, and that there was no sufficient ground for the Commercial Court to establish the plaintiff's mark SPARCO as a well-known mark. To the grief of the Plaintiff, the Supreme Court overturned the Commercial Court decision and declared that the Plaintiff had no legal ground to file a lawsuit at the first place according to the Trademark Law based on the lack of trademark registration in Indonesia of the Plaintiff's mark SPARCO, which rendered the mark unprotected.

In reaching the decision, however, The Supreme Court apparently failed to notice that the Plaintiff in fact had already filed a trademark application at the DGIP for the mark in question, enabling them to file the cancellation lawsuit in accordance to Article 56(3) of the Trademark Law. So the battle was not over yet, and the Plaintiff used this standing to file an extraordinary petition for Review against the Cassation judgment to the Supreme Court. Eventually, in a groundbreaking precedent to the decisions in Review cases, the Supreme Court recognized the error of their own Panel of Justices in the Cassation in applying the rules of the Trademark Law, especially Article 56, and therefore ordered the cancellation of the registration of the Defendant's mark "SPARCO & Device", and rectification thereof from the Trademark General Registry of the DGIP.