平成 26 年 10 月 6 日発行
インドネシア知財ニュース第 021 号

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<Indonesia> Toyota Lost their Lawsuit Against
Local Businessman

same trademark case being examined by the Supreme
Court.
This case began when TCF filed a cancelation lawsuit
against “Cheese Cake” trademark owned by the defendant(De Silva) in class 35 with registration numberIDM000050336. TCF is claiming that their mark “TheCheesecake Factory” is a famous trademark and was firstused in 1972 in Los Angeles, USA. Currently this markhas been registered in European Union, Singapore, HongKong, Macau, Philippines, New Zealand, Russia, Canada,Thailand, Kuwait, and Lebanon for classes 30, 42, and 43.
In Indonesia, TCF has registered this mark in class 30 and43 with registration numbers IDM000068652 andIDM0000108999.
TCF stated that the mark “Cheese Cake” owned by thedefendant has similarity in its essential part with theirmark. Besides that, TCF also claimed that “Cheese Cake”
is not a non-registrable mark for it is a generic word.
Therefore TCF accused that the defendant had filed his
trademark with bad faith that is to free ride the famous
mark “The Cheesecake Factory”.
(Bisnis Indonesia, 28 March 2014)

Toyota Jidhosa Kabushiki Kaisha lost their cancelation
lawsuit against Welly Karlan, a local businessman,
regarding “Prolexus” trademark. According to the Judges,
with Bambang Kustopo as Chief of Judges, Toyota failed
to prove that the defendant has filedProlexus”
trademark with having bad faith. “Prolexus” was filed
under class 25 with registration number IDM000249048.
Through its legal advocate, Oktroi Rooseno, Toyota
claimed that “Prolexus” belonging to the defendant has asimilarity in its essential part with “Lexus” belonging tothem. Toyota said that the defendant only added the word
“Pro” in front of “Lexus” which may confuse public ingeneral.
The defendant, through its advocate from Mulia &Partners, argued that “Prolexus” had been earlier
registered on 28 August 2001 (which was later extendedon 31 May 2010) and this mark was clearly aimed forclass 25 which is for clothing, meanwhile Toyota’s
products are for automotive goods. They argued that
Toyota is too excessive by claiming “Prolexus” as a
famous mark, while the famous one is “Toyota” and not“Lexus” itself. They also opined that it is impossible if
the public would get confused because Toyota’s “Lexus”
is used for automotive goods meanwhile his client’s
product is for clothing.
(Bisnis Indonesia, 20 March 2014)<Indonesia> Filing Trademarks or Trading
Marks?
In 2013, it was recorded that 99 cases on trademark
lawsuit had been filed, meanwhile up to this February
2014, there were 9 cases that took place in related totrademark dispute.
Based on the data from DGIPR, there are at least 300-400
new trademark applications each day. In 2013, totally
there were 62.954 new trademark applications filed and19.523 extended old trademarks. Although not all wereaccepted, but we can imagine how many trademarks
officially registered in Indonesia. The huge amount oftrademarks registered in Indonesia has a high potential
trademark dispute which may end up in the courts.
In most cases, trademark lawsuits were aimed based on
the claim of famous trademark by the plaintiffs. One of
the reason used for supporting the concept of famous<Indonesia> Trademark Dispute between TCF(The Cheesecake Factory) Co. LLC and Local
Businessman Ended Up with a “NO” Result
NO (niet ontvankelijke verklaard) decision (meaning that
this case is unacceptable) was given by the Chief ofJudges at the Central Jakarta Commercial Court, Kustopo.
In their considerations, the Judges said that currently
there is still a similar case involving the same parties and1

平成 26 年 10 月 6 日発行
インドネシア知財ニュース第 021 号

trademark claimed by the plaintiff is that they have filed
their marks in several countries including in Indonesia,
even in some cases those marks were not yet famous
among the Indonesian public nor it has been filed here.
The ideal concept about famous mark has sparked adebate among the IP dan law practitioners which has
caused this issue became a grey area.
The Director of Trademark of DGIPR, Bambang Iriana
Djajaatmadja, said that there currently there is still noofficial definition on famous mark. However, he generally
divided the famous level of a mark into three categories:- first; a famous mark; which is famous and has a highquality most people has already known it.
- second; a well-known; mark or only well-known.
- third; common trademark; which is only an ordinary
mark.
Bambang said that any trademarks which fall in the firstcategory (free ride) shall be rejected for sure, but if it falls
in the third category then it is still debatable. Other
factors that may cause a trademark to be considered as a
famous mark is the marketing / advertising efforts thathas been spent for related mark and also the scope ofmarket area.
(Bisnis Indonesia, 2 April 2014)

against counterfeiters who are currently making
counterfeit products using “Eiger” brand. Mountaineeringboot is one of the products being counterfeited the most,
said Eko Wiharja, legal advocate of Eigerindo.
(Bisnis Indonesia, 3 April 2014)<Indonesia> Copyright Dispute on Soekarno
MoviePT. Tripar Multivision Plus, Ram Punjabi, and Hanung
Bramantyo filed a cassation against the court’s decisionof Commercial Court of Central Jakarta which instructed
them to pay a compensation to Rachmawati
Soekarnoputri,
daughterofSoekarno.
Rivai
Kusumanegara, attorney of the three parties, said that thedecision was awkward because in that decision they wereconsidered as not violating the copyright aspect but they
have to pay the compensation to Rachmawati.
The Judges at Commercial Court of Central Jakarta
explained that previously these parties had signed acooperation agreement prior to making the Soekarno
movie, and they considered that the movie’s script wascoming from Rachmawati which was based on her stage
performance named “Dharma Gita Maha Guru” that
depicted the life story of Soekarno.
(Bisnis Indonesia, 7 April 2014)<Indonesia> AAJI (Association of IndonesianLife Insurance) filed a lawsuit against Mitra
Integrasi on Copyright Case

<Indonesia> Continuation of Cheese Cake
Trademark dispute

The Association of Indonesian Life Insurance (AAJI)
filed a lawsuit against PT. Mitra Integrasi Komputindo(MIK), DGIPR, and PT. Digital Fidusia Indonesia (DFI)
on a Copyright case. AAJI claimed their self as the sole
copyright owner of five materials of computer programs
for limited bancassurance agency certification training,
unit link life insurance product, traditional life insurance
product, limited life insurance, and bancassurance
insurance.
Initially, AAJI appointed MIK and DFI to create those
software for making the e-learning system of insurance
materials training. Those five programs were made during
2005-2006 and were not yet registered at the DGIPR. It
was later found that MIK register said five programs at
DGIPR on July 2013. Therefore, AAJI claimed that thecopyrights of those software belong to them as the party
who appointed MIK and DFI to create such programs.
(Bisnis Indonesia, 2 April 2014)<Indonesia>
Counterfeiters

Eigerindo

In close time, TCF Co. LLC as the owner of The
Cheesecake Factory is planning to file a cassation against
the decision of Commercial Court of Central Jakarta in
related to the trademark dispute on “Cheese Cake”
trademark. TCF claimed that their mark is a famous markwhich was first used in 1972 in Los Angleos, USA, by thecouple Oscar and Evelyn Overton and has now spread out
in many countries such as European Union, Singapore,Hong Kong, Macau, Philippines, New Zealand, Russia,
Canada, Thailand, Kuwait, and Lebanon for classes 30,
42, and 43. In Indonesia, TCF has registered this mark inclass 30 and 43 with registration numbers
IDM000068652 and IDM0000108999. TCF also statedthat the mark “Cheese Cake” owned by the defendant has
similarity in its essential part with their mark. Besides
that, TCF also claimed that “Cheese Cake” is not a
non-registrable mark for it is a generic word. Therefore
TCF accused that the defendant had filed his trademark
with bad faith that is to free ride the famous mark “TheCheesecake Factory”.
(Bisnis Indonesia, 11 April 2014)

threatening

PT. Eigerindo Multi Produk Industri, the owner oftrademark “Eiger”, is threatening to take legal actions2

平成 26 年 10 月 6 日発行
インドネシア知財ニュース第 021 号<Indonesia> Mitra denied Conducting Any
Copyright Violation

trademarks “SD” and “AKAN SD” belongs to Akan
Enterprise but their license was then revoked by Akan in2008 because Prima Karya had registered a new
trademark “SD Pipes System”, which is quite similar to
those of Akan’s, without any permission. From this point,
Akan considered that Prima Karya has filed their newtrademark with bad faith by freeriding the popularity oftrademarks “SD” and “AKAN SD”.
(Bisnis Indonesia, 7 May 2014)

PT. Mitra Integrasi Komputindo (MIK) denied
conducting any legal violation as claimed by AAJI
(Association of Indonesian Life Insurance) in related to acopyright dispute. Through its legal advocate, Niriziki
Perdana Putra, MIK explained that inside the agreement
between them and AAJI, it’s been arranged that any kindof transfer technology and end result of the program
belongs to the Mitra. Indeed the information data wascoming from AAJI, but the transfer technology for thesoftware is from us. He also explained that the main
problem is about the agreement between both parties andnot about legal violation in related to the copyrightapplications filed by his client.
(Bisnis Indonesia, 16 April 2014)<Indonesia> Sony Won a Trademark Lawsuit
Case against Local Entrepreneur
The Central Jakarta Commercial Court on May 14th has
decided to cancel trademark “Vaio” belongs to Susanti byconsidering that the trademark belongs to Susanti has asimilarity in principle with the mark “Vaio” belongs toSony although they were registered in different classes.
Sony’s Vaio is registered in class 9 (personal computer),while Susanti’s Vaio is registered in class 7 (vehicle spareparts) and 11 (faucets, sauna cabinet, etc).
(Bisnis Indonesia, 16 May 2014)<Indonesia> 14th World IPR Anniversary
April 26th, will be commemorated as the 14th World IPR
Anniversary by Indonesia along with the other 187
member countries of WIPO. For Indonesia,
commemorating IPR day is an important thing because in2013 the US government placed Indonesia in priority
watch list which shows us how IP enforcement is still
very low in Indonesia especially in the area of copyrights.
The Indonesian government has actually conducted
several actions to combat piracies such as conducting
raids in many shopping places, seminars on theimportance of IPR to SMEs businessman even toelementary schools.
(Bisnis Indonesia, 25 April 2014)<Indonesia> Indonesia towards ASEANECONOMIC COMMUNITY 2015 in the fieldof IPR
How well Indonesia prepared itself in welcoming theASEAN ECONOMIC COMMUNITY 2015 in the fieldof IPR? To see how well Indonesia is, we can simply use
the economic assessment conducted by the US
government in terms of IPR. Through USTR, the US
government annually assesses / evaluates and classifies its
partner countries in terms of IP enforcement. The result ismade in three criteria, ie., watch list, priority watch list,
and foreign priority country.
What is Indonesia’s position in this list? According to thelatest release by USTR, Indonesia is placed in priority
watch list. This result has clearly shows how well
Indonesia is in protecting and enforcing IPR. Therefore,
the Indonesian government should immediately conduct
necessary actions to increase the level of protection andenforcement of IPR to be able to compete with other
Asean countries in order to provide a conducive situation
to stimulate foreign investors to invest in Indonesia.
(Bisnis Indonesia, 16 May 2014)<Indonesia> Nidia Prima Lost their Lawsuitin the Court
PT. Nidia Prima Tirta, owner of “OSONOUVEAU”, filed
a trademark cancelation lawsuit against “OSO” trademarkowned by Ita Thaher, a local entrepreneur. This lawsuit
was rejected by the judges because they said that saidlawsuit was already too late (it has passed the time limit
given to file such a lawsuit, which is 5 years after theregistration date). Responding to the decision, Redynal
Saat, legal representative of Nidia Prima, will further
discuss this situation with his client.
(Bisnis Indonesia, 29 April 2014)<Indonesia> Akan Enterprise filed a cassation
request against Prima Karya<Indonesia> Semendo Coffee toGeographical Indication from DGIPR

Akan Enterprise filed a cassation request against thedecision of Central Jakarta Commercial Court which
rejected their trademark cancelation request against PrimaKarya. Initially, Prima Karya was the license holder of

The Provincial Government of South Sumatera isplanning to apply for Geographical Indication protection
for Semendo Coffee to DGIPR in order to obtain legal
recognition and to be known for export markets. The3obtain

平成 26 年 10 月 6 日発行
インドネシア知財ニュース第 021 号<Indonesia> Trademark cancelation case of“Kopitiam”

Directorate general of Plantation of South Sumatera said
that there will be three coffees that will obtain IP
protection, namely: Semendo, Ranau, and Kota Agung.
As the first step, they will apply for Semendo coffee infiscal year 2014. So far. local and international markets
have known that Semendo coffee comes from Lampung,Indonesia.
(Bisnis Indonesia, 22 May 2014)

The Central Jakarta Commercial Court has decided toreject the trademark cancelation lawsuit filed by Phiko
Leo against Abdul Alex regarding “Kopitiam” trademark.
Initially, Phiko Leo filed a trademark cancelation lawsuit
against “Kopitiam” trademark belongs to Abdul Alexbecause he considered that this word is derived fromcombination of two words, ie., “kopi” (Indonesian;coffee) and “tiam” (Chinese; food stall) which basicallymeans “a place to drink coffee”, so it is a generic term.
Besides that, Phiko also added that this trademark is a
descriptive mark because it clearly describe the product /service being sold.
(Bisnis Indonesia, 23 May 2014)<Indonesia> Trademark Dispute between
Multicom Persada vs Padang Digital &Several Other Companies
Multicom Persada filed a trademark cancelation lawsuit
for trademark “iBox” against Padang Digital and 20 otherparties, ie., Grandoff International Limited, Trademark
Directorate of DGIPR, Erajaya Swasembada, Data Citra
Mandiri, Sim Chee Ping, and 13 malls in Jakarta.
Trademark “iBox” had been registered on 27 April 2001
(IDM000255853) under class 9 owned by Multicom
Persada, meanwhile Padang Digital’s “iBox” wasregistered on 20 August 2008 (IDM000173959) underclass 35.
(Bisnis Indonesia, 22 May 2014)<Indonesia> It’s time to givepunishment against IP violators

seriousIndonesia has just commemorated the 14th World IPR
Anniversary last April, but there are still so many
homework to do for the Indonesian government in orderto enforce IP protection in this country. In many shopping
malls such as Mangga Dua, it’s very easy to findcounterfeits products from various brands such as
Channel, Etienne Aigner, Gucci, Louis Vuitton, Coach,Crocs, etc. Based on a survey result conducted by theEconomic Faculty of University of Indonesia and MIAP(the anti-counterfeit Indonesian community) on June October 2010, it was found that mostly the products thatare being counterfeited are retail products such as leatherproducts, cosmetics, pharmaceutical products, software,and clothes.
Therefore, it is very important to give serious punishment
against those counterfeiters so that people will no longer
dare to produce / sell counterfeit products.
(Bisnis Indonesia, 2 May 2014)<Indonesia> Hendrik filed an Competency
Exception on a Trademark Dispute
Hendrik, the defendant in the trademark dispute case “EtsZilli” filed a competency exception against Central
Jakarta Commercial Court. He considered that the Central
Jakarta Commercial Court is not authorized to prosecute
him in the court because he is domiciled in Medan. Thecourt schedule on May 21st was supposed to be replic
from the plaintiff, but it was not conducted because ofsaid competency exception. Therefore, the next court
schedule shall be presentation of evidence in exception
before the panel of judges can give decision about theauthority of the Central Jakarta Commercial Court toconduct this court.
(Bisnis Indonesia, 22 May 2014)***4