Biro Oktroi Roosseno
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Biro Oktroi Roosseno INTELLECTUAL PROPERTY NEWSLETTER – June 2017 – 23rdEdition This Edition newsletter contains: 1. Matsunaga Trademark Dispute 2. The K Brother Trademark Dispute 3. Proenza Schouler’s Failed Cancellation Lawsuit 4. The US Fashion Store Macy, Wins Against Local Business 5. Local Businessmen Given The Onitsuka Shoes Logo 6. Tras N Co Released Results of Research on Indonesia’s Innovative Brands 7. Activity of Indonesian Cultural Circle (Lingkar Budaya Indonesia - LBI): visited the Heritage Fort Museum 1. Matsunaga Trademark Dispute Plaintiff's petition to cancel Lie Senihian trademark Matsunaga’s was approved by the Japan Electronic tool manufacturer, panel of judges. Matsunaga Manufacturing Co. Ltd., filed a cancellation lawsuit for the Pro Matsunaga Matsunaga Japan is the first party to use and trademark belonging to the local register the trademark Matsunaga. entrepreneur, Lie Senihian, in Central Jakarta Currently, it belongs to Matsunaga and is Commercial Court. already registered in Japan, Philippines and Indonesia. The lawsuit was filed because the trademark belonging to the defendants was considered In Indonesia, Matsunaga belongs to the to have similarities in principal with the plaintiff, Matsunaga Manufacturing Co. Ltd., plaintiff's product, which uses the word who acquired the trademark registration No. Matsunaga. Moreover, both registered IDM000503466 which is valid until February trademarks have the same type of goods, 9, 2022. The registration application for the which are stabilizer tools. logo has also been filed No. D002016034356 since 22 July 2016. P a g e | 1 INTELLECTUAL PROPERTY NEWSLETTER – JUNE 2017 EDITION th Celebrating its 66 anniversary 2017 Edition “The Judge, granted the entire lawsuit for Tjian, who registered the K. Brothers the plaintiffs, and declared that the trademark in Indonesia. J & K Internatural defendant's (Matsunaga) trademark is void objected because they were the first to use for the sake of the law”, said the legal K. Brothers Cosmetics trademark. counsel in his verdict. There are similarities in the registered Based on the verdict, Lie Senihian's legal trademarks. Both trademarks have the same counsel sought justice at a higher level, letter formation, resulting in the same which is the Supreme Court. pronunciation. Both trademarks are also registered under class 3 which protects the "The cassation memorandum has been kind of goods of cosmetic products. registered on February 20, 2016. We expect the Supreme Court to accept the petition for Therefore the J & K Internatural’s attorney cassation and cancel the verdict of the evaluated that the mark registration by Kho Central Jakarta Commercial Court," said Lie TjengTjian was based on bad faith as it can Senihian's legal counsel quoted from the mislead the consumer. memory file of the cassation. Presiding judge conveyed that the objection Lie Senihian's legal counsel also considered raised by Kho Tjeng Tjian was not in that the judge's decision was assessed to accordance with the legislation. In the have been wrong in applying the law of response, Kho Tjeng Tjian filed four evidence. He assumed the legal council objections against the trademark considered the evidence submitted by cancellation suit from Thai company J & K Matsunaga Manufacturing is in the form of a Internatural. photocopy. Source: from kompas.com; kontan.co.id 2. The K Brother Trademark Dispute The cosmetic company from Thailand, J & K Internatural Thailand Co., Ltd., filed a cancellation lawsuit for the K. Brothers Cosmetics brands against Kho Tjeng Tjian. The first objection was that the Commercial Kho Tjeng Tjian is the holder of trademark K. Court of Central Jakarta is not authorized to Brothers Cosmetics in Indonesia under examine the lawsuit. It is because the Registration No. IDM000462731. defendants are not domiciled in Jakarta but Medan, so that the suit should have been J & K Internatural Thailand Co., Ltd. were filed in the State Court of Medan. objected to the registration by the defendants (Kho Tjeng Tjian). The second objection by Kho Tjeng Tjian considered that the lawsuit lack of party, as The lawsuit was commenced by J & K it does not mention the Directorate General Internatural who objected with Kho Tjeng of Intellectual Property as a defendant. The P a g e | 2 INTELLECTUAL PROPERTY NEWSLETTER – JUNE 2017 EDITION th Celebrating its 66 anniversary 2017 Edition third objection was that the lawsuit is vague The trademark certificate issued under No. and obscure. IDM000410586 registered on March 20th, 2014. Against the first objection, the legal counsel explained the lawsuit of the plaintiff is The similarities between the two trademarks correct. It complies with Article 68 paragraph can be seen clearly from the writing, 4 of Law No. 15/2001 concerning trademark pronunciation, visual, as well as the type of which state, with regard to the lawsuits, goods that are protected. Both are included whereas the defendants residing outside the in class 25 for clothing, ties, shoes, sandals, territory of the Republic of Indonesia, a and shoe soles. lawsuit must be filed to the Commercial The similarities might mislead consumers. Court in Jakarta. Furthermore, the general public might “The judge rejects the objection of consider the defendant’s trademark to have defendants and continued the lawsuit links to the plaintiff’s products or even No.72/Pdt.SusHKI/Merek/2016/PNPn.Jkt.Pst, produced by the plaintiff. said the presiding judge. Based on Article 6 paragraph (1) (b) of law With this decision this case will be continued No. 15/2001 concerning trademarks, an with the examination of evidence from J & K application should be rejected by the Internatural to prove their argument in the Directorate if it has similarity in essential or next meeting. entirely by other parties for well-known trademarks. After the trial, Kho Tjeng Tjian's legal counsel said that he accepted the decision of the panel of judges. "We accept and we will also present evidences of our arguments," he said. Meanwhile, J & K Internatural's legal counsel also believes that the judges' consideration is appropriate. Source: bisnisindonesia.com ; kontan.co.id Before filing the cancellation lawsuit, the plaintiff has been applying for the registration of the trademark to the 3. Proenza Schouler’s Filed Directorate of Trademark for several Cancellation Lawsuit applications on March 31, 2016. There are three applications i.e. No. D00.2016.011264 Proenza Schouler LLC, a manufacturer of protects a class of 25, No. D00.2016.011267 women's clothing and accessories in New protects a class 03, and D00.20160112711 York filed a cancellation lawsuit against a protects a class of 18. similar trademark belonging to Lie Jade Lan. However, the attempt of American Fashion Company, Proenza Schouler LLC, to cancel the trademark Proenza Schouler which P a g e | 3 INTELLECTUAL PROPERTY NEWSLETTER – JUNE 2017 EDITION th Celebrating its 66 anniversary 2017 Edition belongs to Lie Jade Lan ended up failing in Macy's became the exclusive owner of the Central Jakarta Commercial Court. Bloomingdale's Trademark in Indonesia. This is because the Legal council considered Bloomingdale's trademarks have also been that Proenza Schouler’s lawsuit was not filed registered in Russia, Italy, Norway, Uruguay, properly according to the procedure. The Ecuador, Hong Kong, Japan, Peru, Taiwan, Power Of Attorney (POA) of Proenza United Arab Emirates, Australia, China, and Schouler was not made in accordance with France to Germany. As in Indonesia, Macy's the prevailing laws. have acquired the trademark registration under registration No. IDM000255669 in The POA was received by the legal counsel class-18. on November 17, 2016, however, the lawsuit was filed on November 1, 2016. This was Macy's was shocked to discover mattresses, revealed from the objection raised by the bolsters and pillows using the Bloomingdale Directorate General of Intellectual Property trademark. Moreover, the trademark owned as defendants. by PT Sully Abadi Jaya had a certificate from the Ministry of Human Rights under "The judge, received the objection of registration number IDM0000177962. defendants and declared the lawsuit of the plaintiffs as not acceptable" said the legal Macy's considered that PT Sully Abadi Jaya council in his verdict. have mislead consumers. Feeling unfair Earlier, the parties from Lie Giok Lan have treatment, Macy's sued PT Sully Abadi Jaya offered an amicable settlement, however and also the DGIP in relation to the double the offer was not responded to until the mark certificate. verdict was made. On August 29, 2016, the Commercial Court Source: kontan.co.id of Central Jakarta District Court cancelled the Bloomingdale's trademark owned by PT Sully Abadi Jaya. 4. The US Fashion Store Macy, Wins Against Local Business Bloomingdale's is the name of the Department Store owned by Macy’s. Its company headquarters is in Pacific Ave, California was established in 1972. In the United States, Bloomingdale's mark has been registered in 1972, and in 2004 in South Korea. Macy's Department Store as the With that, PT Sully Abadi Jaya filed a Bloomingdale trademark holder won a cassation against the cancellation of their trademark dispute against a local company, trademark. PT Sully Abadi Jaya in Indonesia. As a result, P a g e | 4 INTELLECTUAL PROPERTY NEWSLETTER – JUNE 2017 EDITION th Celebrating its 66 anniversary 2017 Edition According to PT Sully Abadi Jaya, they were Jelenk LTD. to ASICS Corporation. The word the first party who registered the brand to Tiger also sticks to the ASICS TIGER logo. the DGIP, therefore PT Sully Abadi Jaya should be entitled to the trademark. It is in The Onitsuka shoes has been distributed in various countries, such as Canada, the accordance with the principle of first to file, where PT Sully Abadi Jaya registered the United States, Brazil, Europe, Australia, mark on January 5th, 1989, while Macy's China, Hong Kong and so on.