May 12, 2021
German premium fashion company Hugo Boss Trademark Management GmbH & Co.KG can breathe a sigh of relief, the journey in protecting their intellectual property rights in Indonesia has yielded a great result, the Supreme Court has granted their cassation case with decision number 520 K/Pdt.Sus-HKI/2021 on April 28, 2021.
In this decision one can observe that it is appropriate for the trademark owner, under the principal of “first to file” registration under prevailing Indonesian law, to be granted in favour of them. It is also perfectly correct that the rightful owner of trademarks take all necessary legal actions against any parties and/or other trademark which have similarity in principal with their trademarks that has been filed on based of bad faith.
The verdict itself, the Indonesian judiciary basically concedes that the registration of a trademark with the element of the word "HUGO" in a whole trademark has similarity in principle with the trademark owned by Hugo Boss Trademark Management GmbH & Co.KG, which has been provided with a legal protection in Indonesia since 1989. Furthermore, the registration that has inappropriately been filed and without the approval of the legal trademark owner leads to an applied bad faith, as it has utilized the fame trademark that is already previously establish and is internationally renowned trademark owned by Hugo Boss Trademark Management’s GmbH & Co.KG. All these acts of bad faith have been to the detriment of the rightful trademark owner.
Pursuant to the decision, the inappropriate trademarks registration, “HUGO SELECT LINE” with registration number IDM000263074, trademark “HUGO SELECTION” with registration number IDM000156405 and trademark “HUGO SELECTLINE + LUKISAN” with registration number IDM000248527 are consequentially denied by the judiciary and therefore removed from the Trademark Official Gazette by the Directorate General of Intellectual Property Rights Cq. Directorate of Trademarks and Geographical Indications which also acted as Co-Defendant in this case.
Furthermore, both Hugo Boss Trademark Management GmbH & Co.KG and K&K Advocates - intellectual property greatly appreciates the Supreme Court decision that has demonstrated that law enforcement in Indonesia, especially in the realm of trademark law as part of intellectual property rights, has been legally enforced, and also provided legal certainty and justice to the rightful trademark owner, which is in fact was the first registered trademark owner in Indonesia as well as the owner of an establish and renowned international trademark. (eip/sof)
(Tulisan di atas adalah merupakan artikel dan tidak dapat dianggap sebagai advis atau opini hukum dari penulis dan/atau kantor hukum K&K Advocates).