By Carola Monintja
In an interesting trademark dispute in Indonesia, two consumer goods giants, namely Orang Tua Group and Unilever Indonesia, battled to see who would come out the strongest. These two giants have long-standing and remarkable business backgrounds in Indonesia. Orang Tua Group (OT) is a family business empire that started in 1948. Their initial business was manufacturing and distributing a traditional herbal drink which is commonly known in Indonesia as “Anggur Orang Tua” (translated: Old man wine) in Semarang, Indonesia. Anggur Orang Tua is a mixture of wine with traditional herbals that is commonly believed to have health benefits. Within 73 years, OT’s business journey transformed them from a traditional drink manufacturer into a local FMCG giant with diverse business units manufacturing everything from liquor, snacks, candy and healthy drinks to oral care products. As an FMCG company, OT placed importance in IP protection and in monetizing their IP rights. OT thus established a Singaporean based company, Hardwood Pte. Ltd., that owns all their IP and created an internal licensing system within the company for their IP usage.
The second giant is PT. Unilever Indonesia (“Unilever”), a multinational consumer goods company that was established in Indonesia in 1933, when Indonesia was a Dutch colony. Unilever itself is known as a manufacturer of goods for needs from head-to-toe in Indonesia and globally.
OT and Unilever basically have different business lines that intersect at oral care products. In Indonesia, OT is well-known for its “Formula” oral care products, and Unilever is well-known for its “Pepsodent” oral care products, which led to the beginning of this dispute.
Circa 2008 and 2009, OT wanted to rejuvenate their “Formula” toothpaste brand with a word that represented the goods itself and resonated with consumers. The word “STRONG” was chosen and OT then filed the trademark application and owned the registration of “STRONG” (No. IDM000258478) and other variants of STRONG trademarks in Class 03 for toothpaste, mouth wash and preparation for cleaning dentures.
On 25 September 2019 and 1 October 2019 respectively, Unilever filed the trademark applications of “PEPSODENT STRONG 12” (No. DID2019056670) and “PEPSODENT STRONG 12 JAM” & Device (No. DID2019057948).
OT subsequently objected to Unilever’s action of filing trademark applications that contained the mark “STRONG”. OT, under Hardwood Pte. Ltd., filed a trademark infringement lawsuit based on Article 83 of Law No. 20 Re. Marks (“Trademark Law”) at the Commercial Court on 29 May 2020 under Case No. 30/Pdt.Sus-HKI/Merek/2020/PN Jkt.Pst. On 3 December 2020, the Commercial Court decided in favour of OT, and held that:
- All the claims raised by OT in the lawsuit were accepted;
- The mark “STRONG” (No. IDM000258478) under Class 3 owned by OT is a well-known mark in Indonesia;
- Unilever’s applications using the term “STRONG” possessed substantial similarities to the “STRONG” mark owned by OT;
- Unilever had infringed the “STRONG” mark owned by OT;
- Unilever must pay compensation to OT in the amount of Rp 30 billion;
- Unilever must pay all court fees.
This was a landmark decision in the sense that the compensation approved by the court was a significantly sizable amount. Unsurprisingly, Unilever decided to file cassation to the Supreme Court, so this story will be continued.
Some interesting points to note in this case are, (i) whether the huge compensation would really be paid by Unilever, and (ii) whether the Supreme Court is aware of Article 22 of the Trademark Law, which stipulates that where a generic word is registered, other parties will later be able to use the said generic word with additional words as long as a distinctive feature exists. Examples of standalone generic words in Bahasa Indonesia that are registered as marks include “KUAT” in Class 16 (No. IDM000372104), “KUAT” in Class 07 (No. IDM000807439), “BAGUS” in Class 21 (No. IDM000038413), “BAGUS” in Class 30 (No. IDM000024735), “HEBAT” in Class 30 (No. IDM000198154), “HEBAT” in Class 43 (No. IDM000672114), “CANTIK” in Class 29 (No. IDM000018768), and “CANTIK” in Class 30 (No. IDM000159298).
We learn something from everything that happens around us, and similarly there are learnings we can draw from every case. From this case, we learn that having the registration of a STRONG WORD or a STRONG CHARACTER (standalone) that acts as the main characteristic in the product is extremely important. OT has made the best decision in having the registration of STRONG stands alone in class 03.
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