Court Applies Standard Rules Against Unlawful Registration Of Well-Known Marks In Different Class

It is already in generally accepted norms that protection for well-known marks covers not only goods or service in the same class, but should also be able to encompass different classes. Nevertheless, reliable standard of reference must be set in order to determine of whether or not a trademark can be classified as well-known either in the same class or in the different classes. While such standard for the first category is already provided in the Elucidation of Article 6 paragraph 1. b of Law No. 15 of 2001 on Trademark (i. e. public knowledge, incessant promotion, investments and trademark registrations in various countries and result of an independent survey, if necessary), the same for the second category is yet to be provided as the planned revision of the relevant law is still ongoing.

While the public at large has been looking forward to such regulation for long as to assure maximum protection for the interests of the rightful owner of well-known marks, as a matter of fact a Thailand-based company has just successfully enforced its registered mark against another registration of the same mark by a third party in a different class.

The plaintiff is the owner of trademark “M-150” registered in classes 9, 11, 14, 16, 18, 21, 29, 30, 32 and 33; who later initiated a civil trademark cancellation case at the Commercial Court of Central Jakarta against a later registration of a same mark in class 25 by a local individual, in a case which a law-set standard of reference for cross-class protection of a well-known mark could have played an important and decisive role. The lack of such regulation has however led the panel of judges to go back and refer to the Elucidation of Article 6 paragraph 1(b) of the Law No. 15 of 2001 concerning Marks in order to determine well-known status of the plaintiff’s trademark. In view thereof, the panel of judges put special consideration to the level of public awareness upon the mark in question in the relevant trade, and went on to acknowledge the facts that the plaintiff’s trademark as registered in class 32 is a well-known mark due to broad public

consumption at very significant level of the product bearing the mark “M-150” – an energy drink – throughout the territory of Indonesia, in which the product is marketed heavily with various packaging such as cans, sachets, and glass and plastic bottles alike.

Accordingly, the resulting decision was made in favor of the plaintiff’s standing that its registered mark is a well-known mark, by which the protection should also encompass other classes apart from the original classes for which the mark was initially registered.